John Fulton, Jr.
Mr. Fulton is a Registered Patent Attorney and Senior Counsel with Malloy & Malloy, P.L., Board Certified in Intellectual Property Law, and rated AV Preeminent by Martindale-Hubbell. His practice includes all aspects of Intellectual Property Law with a focus on patent and trademark prosecution and related transactional matters, and patent infringement litigation. He has a Bachelor of Science in Chemical Engineering from Cleveland State University, and obtained considerable engineering experience prior to receiving his law degree, with honors, from the University of Miami School of Law. In addition to the Florida Bar, he is admitted to practice in the U.S. District Courts for the Southern District of Florida, the Middle District of Florida, and the Eastern District of Texas, and the U.S. Courts of Appeals for the Eleventh and Federal Circuits. Mr. Fulton also maintains his Registration as a Professional Engineer in the State of Florida.
Mr. Fulton is an active member of the Florida Bar, and currently serves on the Intellectual Property Law Certification Committee. He is also a member of the Federal Bar and Dade County Bar Associations, and provide Pro Bono services through the DCBA’s Small Claims Clinic and Venture Law Project initiatives. He has served as an Officer and Director of the Inventors Society of South Florida, and regularly provides complimentary “Office Hour” consultations to participants at Venture Café Miami. He has also had the honor to serve as President of his Rotary Club, the Rotary Club of Miami Brickell.
As patent practioners well know, and Applicants are often, albeit begrudgingly, forced to accept, Patent Examiner's exhibit considerable latitude when it comes to rejecting patent claims as obvious under 35 U.S.C. §103. A recent opinion of the U.S. Court of Appeals for the Federal Circuit, In re Klein, should provide greater leavarage for practitioners and Applicants faced with obviousness rejections in the future, particularly when there is a question as to whether a reference cited by an Examiner is analogous prior art.
The U.S. Supreme Court recently granted certiorari to Microsoft in a case involving patent invalidity. Microsoft is challenging a Federal Circuit Court of Appeals finding of validity in favor of patent holder, i4i, in a case that has been long fought in the lower courts, and resulted in an award of over $200 million in damages to i4i. In its decision, the Federal Circuit relied on its long standing precedent that patent invalidity must be proven by "clear and convincing evidence."
The Federal Circuit recently denied a request for rehearing en banc in the matter of Avid Identification Systems, Inc. v Crystal Import Corp. In the underlying District Court case, it was determined that the president of Avid failed to disclose a demonstration of a "precursor product" at a trade show to the U.S. Patent and Trademark Office during prosecution of the Avid patent, and the Federal Circuit affirmed the District Court's decision that this failure was sufficient to hold the Avid patent unenforceable based on inequitable conduct.
The interesting, and somewhat disturbing, impact of this decision is the fact that the District Court jury found that Avid's trade show demonstration did not constitute invalidating prior art, i.e., Avid's demonstration was not an invalidating disclosure of the invention, nor a sale to offer to sell the patented invention.
Thus, this decision begs the question: When [and how] is non-invalidating prior art material to patentability?
For more, click here to read Judge Newman's Dissent to the En Banc Order.
On remand from the Federal Circuit, the U.S. District Court for the Southern District of Texas based a damages award for false patent marking on the highest selling price of the falsely marked products.