[Patentpractice] Fed. Cir. Consideration of Prior Art

[Weitzmanip]

Yes, and yes.  There are several cases that hold that either can be the case, although they do say that the presumption of validity makes it more difficult to do so. 

Nevertheless, I have never seen a case where, in litigation, a patent was held anticipated by a reference cited during prosecution.  There is a Valmet v. Beloit case where patent claims were invalidated in litigation based upon two references that were not only considered by the Examiner, they were applied in a rejection and overcome.  The invalidation was based upon the prior secondary reference becoming the primary and vice versa.  As I recall, the invalidity was upheld by the Fed Cir. 



On Feb 18, 2024, at 11:14 PM, Stanley H. Kremen via Patentpractice <patentpractice at oppedahl-lists.com> wrote:

Colleagues:

In a patent infringement litigation, if the defendant tries to show invalidity of the asserted patent by citing prior art that was reviewed and considered  by the examiner during prosecution, can that prior art be used to invalidate the patent under 35 USC 102?  How about being used in combination under 35 USC 103? What is the Federal Circuit’s position or holding? Can you provide any case citations?

Thanks in advance for your reply. 

Stanley H. Kremen 
(Stan)

Sent from my iPhone
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