The issues at hand in this case deal with procedural issues when dealing with infringement lawsuits at the federal level, while there is a pending appeal with the USPTO.

Before this case, Puget Bioventures brought suit against Biomet alleging infringement of US Patent Number 7,344,541, which expired on December 25, 2015. After filing the suit, Biomet requested a reexamination on the case. On reexamination, the examiner rejected all of the claims. In response, Puget responded to the rejections by amending the independent claims, and rewriting the un-amended claims from dependent to independent form. These claims were rejected, and Puget filed an appeal to the board. The board reversed the rejections of the unamended claims but upheld the rejections of the amended claims.

The issue presented in this case deals with procedural issues. The ‘541 patent expired after the USPTO Board’s decision but before the federal circuit’s decision. However, the PTO does not enter amendments made in inter partes reexamination AFTER the expiration of the patent. Thus, the Amended claims could not issue.  This portion of the case was remanded back to the PTO.

Dealing with the unamended, both parties agreed that because the patent was expired, the Phillips standard rather than the broadest reasonable construction applies. Under the Phillips standard, claim terms are given the meaning that a person of ordinary skill in the art at the time of the invention. Under the reasonable interpretation standard may be the same as or broader than the construction under the Philips standard. Using the Phillips standard, the federal circuit found no reversible error in the Board’s construction of the claims.

Patent Attorney Take A Ways:

  1. There are some inconsistencies between how the federal circuit and the PTO handles claim amendments.
  2. When dealing with expired patents the standard on claim interpretation may be narrower. This means that you shouldn’t wait to file infringement suits till after the patent has expired.
By | 2016-01-21T10:49:40+00:00 January 21st, 2016|Blog|Comments Off on BIOMET ORTHOPEDICS, LLC v PUGET BIOVENTURES