Federal Circuit Review – Issue 57 – July 03, 2015

Each week in the Federal Circuit Review, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson, Ryan Schneider, Bob Schaffer, John Morrissett and Tinh Nguyen


Bad Lawyering Is Not Misconduct For Awarding Attorneys Fees

Gaymar Industries, Inc. v. Cincinnati Sub-Zero Products, Inc., No. 2014-1174, 2015 U.S. App. LEXIS 10736 (Fed. Cir. Jun. 25, 2015) (Dyk, J.). Click Here for a copy of the opinion.

Gaymar Industries, Inc. (“Gaymar”) sued Cincinnati Sub-Zero Products, Inc. (“CSZ”), asserting that CSZ’s Blanketrol III device infringed various claims of U.S. Patent No. 6,517,510 (“the ‘510 patent”), which relates to a temperature control system having a blanket for conductively warming or cooling a patient. CSZ filed an inter partes reexamination (“IPR”) request with the U.S. Patent and Trademark Office (“PTO”), which granted the request and rejected all 134 claims of the ‘510 patent. Gaymar appealed the PTO’s cancellation decision but then withdrew the appeal and expressly abandoned the ‘510 patent.

The district court lifted the stay it order in light of the IPR, with the only remaining question being CSZ’s request for exceptional case attorney’s fees. CSZ alleged that Gaymar’s litigation position was frivolous and that Gaymar had engaged in litigation misconduct. A magistrate judge recommended that CSZ’s fee motion be rejected because Gaymar’s litigation position was not objectively baseless and, even if the case was deemed exceptional under §285, CSZ had committed its own misconduct by making “misrepresentations to the court” and “shifting legal theories.” CSZ had told the court that it needed to identify an expert in the related technology and later asserting that it maintained “from the outset” that no expert was needed, had its expert opine on prior art and later denied that the expert did so, and misrepresented Gaymar’s claims and position during a hearing. The district court adopted the magistrate judge’s recommendation. In wake of the U.S. Supreme Court decision in Octane Fitness LLC v. ICON Health and Fitness, which made it easier for courts to award attorney’s fees in patent lawsuits, CSZ requested reconsideration. However, the magistrate judge maintained his previous recommendation, and the district court again agreed, finding that Octane would not change the result. CSZ appealed the district court’s denial of its fee motion.

The Federal Circuit affirmed-in-part, reversed-in-part, and remanded the district court’s decision to deny CSZ’s fee motion under Octane. “The examples cited by the district court – whether considered in isolation or in the aggregate – amount to sloppy argument, at worst. While such sloppiness on the part of litigants is unfortunately all too common, it does not amount to misrepresentation or misconduct.” However, because the lower court relied on CSZ’s alleged own litigation misconduct as a reason to deny its motion for attorney’s fees from Gaymar, remand was required. The Court stated that the district court “remains free to deny attorney’s fees based on the totality of the circumstances, including the strength of Gaymar’s litigation position and the sustained finding that Gaymar’s litigation position was not objectively baseless.”


Continuing Applications Are not Entitled to Patent Term Adjustment for Delay in the Prosecution of the Parent Application

Mohsenzadeh v. Lee, No. 2014-1499, 2015 U.S. App. LEXIS 10735 (Fed. Cir. Jun. 25, 2015) (Reyna, J.). Click Here for a copy of the opinion.

Mohsenzadeh filed Application No. 09/899,905 on July 6, 2001. The Examiner issued a restriction requirement on September 21, 2006. Mohsenzadeh made an election, and the elected claims issued as US Patent No. 7,742,984. The PTO granted a patent term adjustment of 2,104 days, which included 1,476 days of A Delay (PTO’s delay in issuing the restriction requirement).

Troutman-Sanders-SquareMohsenzadeh filed two divisional applications to the non-elected inventions in the ‘905 application. Both divisional issued as patents claiming priority to the ‘984 patent. The PTO granted 0 days of patent term adjustment for both divisionals. Mohsenzadeh timely requested reconsideration of both of the divisional PTA determinations, arguing that each patent was entitled to the 1,476 days of A Delay as in the ‘984 patent. The PTO denied both requests based on 37 C.F.R. 1.704(c)(14), which provides that delays arising prior to the actual filing date of a continuing application will not apply to the application that results in the patent. Mohsenzadeh subsequently filed an action in the district court challenging the PTO’s denial of his reconsideration requests. The PTO moved for summary judgment, which the court granted. Mohsenzadeh appealed.

Based on the plain language of the patent term adjustment statute, 35 U.S.C. 154(b)(1)(A), the Federal Circuit held that “Congress intended delay in the prosecution of an application to be restored to a single patent, the patent issuing directly from that application.” Citing to other subsections that expressly addressed both parent and continuing applications, the Court concluded that “[h]ad Congress intended for period of delay during prosecution of a parent application to be restored for all continuing applications deriving from it, it would have done so expressly.” The Court therefore affirmed the PTO’s denial of any PTA for the divisionals.


The following opinions are not reported in this newsletter: 

Internet Patents Corp., v. Active Network, Inc., No. 2014-1048, 1061, 1062, 1063, 2015 U.S. App. LEXIS 10536 (Fed. Cir. Jun. 23, 2015) (affirming that claims directed to ineligible subject matter and therefore invalid). Click Here for a copy of the opinion.

G.D. Searle LLC, v. Lupin Pharmaceuticals, Inc., No. 2014-1476, 2015 U.S. App. LEXIS 10537 (Fed. Cir. Jun. 23, 2015) (affirming that safe harbor against a claim of double patenting rejection does not apply). Click Here for a copy of the opinion.

Speedtrack, Inc. v. Office Depot, Inc., No. 2014-1475, 2015 U.S. App. LEXIS 11169 (Fed. Cir. Jun. 30, 2015) (affirming that Kessler doctrine precludes infringement claims in full). Click Here for a copy of the opinion.


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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3 comments so far.

  • [Avatar for Http://themmogame.Blog.pl]
    July 9, 2015 05:18 am

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  • [Avatar for Anon]
    July 5, 2015 07:50 am


    I am not sure I understand your question. How does one have a continuation-in-part without having new matter added?

    A rose by any other name would smell as sweet.

  • [Avatar for Eric Berend]
    Eric Berend
    July 4, 2015 05:03 pm

    Actually, if one reads the Searle decision, there are some interesting aspects. In the end, it confirms the basic principle that adding any new matter to a U.S. Patent Application creates, in essence, a new prosecution with a potential to invalidate a part or parts of the original.

    Also, if an Examiner issues a requirement of restriction and you think the scope specified exposes “essential” (e.g., novel) aspects of your invention, file a divisional Patent Application(s) to cover those parts which are exposed, ASAP!

    Gene: if I may ask, would you agree that this Decision reaffirms that continuation-in-part Patent Applications do not gain benefit of the same “safe harbor” provisions of Section 121 against the “doctrine of obviousness-type double patenting “, unless there is no new matter added; which would seem to make such an Application, functionally indistinguishable from a divisional Patent Application?