We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, May 14, 2012. Brief synopses are presented below.

Leader Tech., Inc. v. Facebook, Inc., Case No. 2011-1366 (Fed. Cir. May 8, 2012) (attached).

This patent infringement case relates to software that allows users on a network to communicate and collaborate through “boards” that are accessible through an Internet browser.  In 2008, Leader sued Facebook alleging infringement of their ’761 patent.  The jury in the district court trial found that the ’761 patent was not entitled to the priority date of the provisional application.  The jury also found that the claims of the ’761 patent were invalid for being in public use and on sale more than one year prior to the date the patent application was filed.

On appeal, Leader argued that Facebook failed to offer clear and convincing evidence that the version of Leader’s software offered for sale or used prior to December 10, 2002 fell within the scope of the asserted claims.  The Federal Circuit held that there was legally sufficient evidence to support the jury’s verdict that the version of the plaintiff’s product demonstrated and offered for sale prior to the critical date was an embodiment of the asserted claims.  The court pointed to interrogatory responses and the deposition of Leader’s founder in which Leader admitted that offers for sale of a software product fell within the scope of the asserted claims.

In re Youman, Case No. 2011-1136 (Fed. Cir. May 8, 2012) (attached).

An examiner’s rejection of claims in a reissue patent application for improperly recapturing subject matter surrendered during prosecution of the parent was affirmed by the Board of Patent Appeals and Interferences.

The Board applied the three-step recapture rule analysis.  Under step one, the Board found that the reissue claim was broader than the issued claim, but narrower than the original claim.  Under step two, the Board determined that the broadening related to the surrendered subject matter.  For step three, the Board concluded that other narrowing limitations in the reissue claims were not overlooked during the prosecution and therefore could not avoid the recapture rule.

The Federal Circuit vacated the Board’s decision stating that the Board did not properly conduct step three of the recapture rule analysis.  The Court stated step three as follows: if the patentee modified the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim the recapture rule does not bar reissue.  The case was remanded to determine whether the applicant avoided the recapture rule bar on reissue by materially narrowing the claims relative to the original claims.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, May 14, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.