Partner John Hemmer spoke with Law360 for an article about recent Federal Circuit decisions overturning substantial patent judgments due to statements the patent owner made during the application process. The article discusses how the two cases—Top Brand LLC v. Cozy Comfort Co. and Colibri Heart Valve LLC v. Medtronic Corevalve, LLC—illustrate the importance of applicants carefully calibrating their arguments, particularly when seeking design patents.
“These are both really good reminders, happening the same week, that you have to be very careful during patent prosecution,” John said. He added that because disparaging comments by patent applicants about earlier inventions can be used to limit the scope of the claim, “we often compare what we try to do during the prosecution to surgery. Meaning, you’ve got to be very precise thinking about all these things. What you say is going to be construed by a litigator, and every single word will be scrutinized.”