Agilent Interference Analysis, PTO’s Lack of Rulemaking Authority Reaffirmed

The U.S. Court of Appeals for the Federal Circuit ruled on January 5 that a district court abused its discretion by dismissing a lawsuit challenging several rulings by the Board of Patent Appeals and Interferences. The court reaffirmed its position in the 2009 Agilent case that a Patent and Trademark Office rule on construing patent claims does not apply when evaluating the claims under the “written description” requirement. The case was between Koninklijke Philips Electronics (the assignee of a patent involving a cardiac defibrillator) and Cardiac Science Operating Co. The Board of Patent Appeals and Interferences initially found in favor of Cardiac Science, which had filed an application for priority. Philips then filed suit seeking review of three of its preliminary motions before the board of a claim construction hearing. The judge denied Philips’ motion for a claim construction hearing and sua sponte dismissed the complaint with prejudice. However, on appeal, Judge Arthur Gajarsa agreed with Philips, and not only remanded the case, but also criticized the lower court for failing to give Philips an opportunity to present additional evidence, as is available under a Section 146 appeal. Philips is represented in this matter by Finnegan.