Carleton Clauss, Partner

Publications & Media

Federal Circuit Decisions for Week Ending March 22, 2013

Phillip M. Adams & Associates, LLC v. ASUS Computer International, Inc. (March 18) (non-precedential) (3-0) Patent No. 5,983,002

Key point:

  • A certification test performed on a product is not used to “make” the product, and thus, process claims directed to the certification test are not infringed under 35 U.S.C. § 271(g) when the product is imported into the U.S.

BASF AGRO B.V. v. Makhteshim Agan of North America, Inc. (March 20) (non-precedential) (3-0) Patent Nos. 6,414,010 and 6,835,743

Key point:

  • Disclaimers made during patent prosecution must be precisely defined or they may be construed more broadly than intended during claim construction.

Abbott Laboratories v. Cordis Corporation (March 20, 2013) (precedential) (3-0) Patent Nos. 6,746,773 and 7,591,844

Key point:

  • 35 U.S.C. § 24 empowers only for a district court to issue subpoenas for use in a proceeding before the PTO if the PTO’s regulations authorize parties to take depositions. Thus, section 24 subpoenas are not available in inter partes reexamination proceedings.

Anvik Corporation v. Nikon Precision, Inc. (March 22, 2013) (non-precedential) (3-0) Patent Nos. 4,924,257, 5,285,236, and 5,291,240

Key point:

  • When a patent application does not provide a specific apparatus for performing the claims, if an inventor cannot provide examples of other optimum systems for performing the claimed invention when asked about the best mode, his statement is not necessarily an admission that the inventor purposely intended to hide the best mode.