Court Tells Pond to Jump in Lake

Court Tells PondWe have a couple of short opinions in this post. One is, literally, a probing opinion on invalidity. The other is an order granting en banc review in a case we told you about a few months ago.

In re Pond, No. 2011–1179 (Fed. Cir. Jan. 18, 2012) (Chief Judge Rader, Circuit Judges Dyk and Reyna) (per curiam) (nonprecedential)

This case is about as much fun as a visit to, well, you know. Pond filed an application claiming a tip for a dental probe:

In his application, he pointed out a prior art tip:

What’s the difference between the two tips? Pond’s claim was directed to a “unitary, one-piece” tip. Pond argued that the difference between his “unitary, one-piece” tip and the prior art was that his tip was molded in one piece from the start, but the prior art probe was made from two parts.

The patent examiner didn’t buy it and neither did the Board of Patent Appeals and Interferences. Both found that the prior art tip anticipated Pond’s claims. The problem for Pond is that the prior art patent specifically says that the two pieces could be bonded using insert molding. And insert molding is a process to combine parts into a single component.

The Federal Circuit agreed with the Board. How the end product is made doesn’t matter when the claim is for the product itself. The prior art tip had all the features of Pond’s claimed tip; that’s anticipation.

Looks like no patent for Pond.

It’s a short order, if you’d like to read it.

Federal Circuit Intervenes in Intervening Rights

Marine Polymer Technologies, Inc. v. Hemcon, Inc., No. 2010–1548 (Fed. Cir. Jan. 20, 2012) (en banc) (nonprecedential)

We have a quick update in the Marine Polymer case that we wrote about last fall. The court has decided to rehear it en banc, but without new briefing or oral argument. The case involved a question about intervening rights. Marine Polymer had changed the scope of its claims during a reexamination by arguing that the term “biocompatible” was more limited than the U.S. Patent & Trademark Office believed. But Marine Polymer didn’t change the language of the claims.

The majority said that was still enough to create intervening rights, which would allow Hemcon to use the patent up until the time the PTO issued the reexamination certificate. Judge Lourie dissented, arguing that because the claims weren’t changed, there were no intervening rights. Apparently the other judges on the court are interested enough to want to answer the question definitively. But the fact that they didn’t ask for additional briefing or argument suggests that they know how they’ll decide.

We’ll let you know what happens. You can see the Federal Circuit’s order here.

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