In a per curiam, non-precedential opinion, the U. S. Court of Appeals for the Federal Circuit has held that a district court may invalidate claims on summary judgment over prior art before the examiner. Athletic Alternatives, Inc. v. Benetton Trading USA, Inc., Case No. 05-1378 (Fed. Cir. Mar. 31, 2006) (per curiam; Michel, C.J.; Mayer, J.; Bryson, J.).
Athletic Alternatives charged the defendant with trade secret misappropriation and infringement of its patent on a sports racquet having an interwoven string bed in which the ends of the strings are anchored in frame holes that lie alternately above and below the plane of the string bed.
The district court found some of the claim at issue invalid on summary judgment, relying on prior art that had been before the examiner during prosecution. Athletic Alternatives appealed.
Citing In re Portola Packaging, Athletic Alternatives contended that "a district court should not invalidate claims where the exact prior art references were before the patent examiner who upheld the patent." The Federal Circuit disagreed.
As the panel explained, Portola involves reexamination proceedings and stands for the proposition that during reexamination the USPTO is not supposed to reevaluate prior art that was considered in the original examination. It does not, however, limit a district court’s authority to address patent validity.
Accordingly, the Court affirmed the finding of obviousness.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
