Court Affirms Board’s Finding of Invalidity During Interference Proceeding
April 05, 2001
Last Month at the Federal Circuit - May 2001
Judges: Lourie (author), Mayer, and Bryson
In Thompson v. Thompson, No. 00-1309 (Fed. Cir. Apr. 5, 2001) (nonprecedential decision), the Federal Circuit affirmed a Board decision finding U.S. Patent No. 5,329,438 (“the ‘438 patent”) invalid for obviousness in a patent interference proceeding. On appeal, the patent holder argued that the Board had erroneously rejected the claims based on a combination of references not asserted by the challenger. The Court disagreed, finding substantial evidence to meet the patent challenger’s burden of proof to show invalidity by a preponderance of the evidence in this interference proceeding. The Court also rejected the patent holder’s loose arguments of secondary considerations, finding no nexus between the claimed invention and actual sales and finding evidence that others had “marveled” at the invention too vague.