In re Paulsen
United States Court of Appeals for the Federal Circuit
30 F.3d 1475 (Fed. Cir. 1994).
- Written by Jamie Milne, JD
Facts
In 1986, a patent was issued to David Paulsen (defendant) for a portable computer. The patent’s claims described a portable computer in a compact metal case with a hinged clamshell configuration that allowed the case to be opened to reveal the computer’s screen and keyboard and closed again for transport. In 1990, two requests were filed for reexamination of the patent by the United States Patent and Trademark Office (PTO). The requests challenged the patent’s validity based in part on alleged prior anticipation by a Japanese patent application by Yokoyama (the Yokoyama reference). The Yokoyama reference described a desktop calculator housed in a portable attaché case that, when opened, revealed a display and keypad. Upon reexamination of the patent, the PTO examiner rejected two of the patent’s claims as being anticipated by the Yokoyama reference. The PTO Board of Patent Appeals and Interferences (board) upheld those rejections. AST Research, Inc. (defendant), which had acquired the patent from Paulsen, appealed to the Federal Circuit, arguing that the Yokoyama reference did not anticipate the patent’s claims because the Yokoyama reference was not enabling.
Rule of Law
Issue
Holding and Reasoning (Lourie, J.)
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