We have consistently assisted US, European and Japanese Attorneys in finding evidence of prior disclosure of the invention.
Many of our clients (litigation attorneys) are working on contingency basis with their clients and consistently engage us on Invalidation assignments.
In light of the recent changes in patent law, would some prior cases be decided differently if they came before the Federal Circuit in 2003? and a proposed statutory amendment that arguably reflects the recent legislative changes in patent law and would change one of the Oddz On holdings.
In particular, this Note explores a holding of Oddz On Products, Inc.
What that leaves is prejudice to the patentee (assume high) vs.
filing for reexamination before litigation commences.... Would showing the judge the invalidating prior art, explaining why the claims are clearly anticipated based upon it, and showing the truly horrible examination the patent received help at all?
But the Federal Circuit went further, saying that even if the records were identical Novartis’ argument would have to fail.
The Federal Circuit disagreed, finding that the record in federal court was not identical to the record at the PTAB.
This type of prior art could be used in an obvious-type rejection.
Congress should codify this trend and the Federal Circuit should not consider 102(f) prior art when determining obviousness for purposes of 103.
The problem with allowing the Oddz On holding to stand is that it threatens the modern realities of research and evidences the fact that a precise reading of the patent statutes is in tension with Congressional intent.
For example, in trying to answer this prior art question regarding caching of web content, I was unsure which claims the prior art needed to cover.
One reason for having dependent claims in the first place is that they can potentially stand on their own even if the claim that they depend from is deemed invalid.