In a decision yesterday, the Federal Circuit held that a district court construed a claim limitation too narrowly.  However, even under the broader construction, summary judgment was still appropriate, because there was no genuine issue of fact that the accused method still did not practice that element, either literally or under the doctrine of equivalents.

More detail of PSN Ill., Inc. v. Ivoclar Vivadent, Inc. after the jump.

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As expected, this morning the USPTO filed a notice of appeal to the Federal Circuit in the lawsuit challenging its new claim and continuation rules.  The USPTO will seek reversal of the district court's order finding the new rules exceeded the USPTO's rulemaking authority.

We'll continue to monitor the case as it proceeds through briefing and oral argument before the Federal Circuit.  Expect a similar flood of amicus submissions at the Federal Circuit.  It will be interesting to see if the court permits any amici to participate in oral argument, such as in the Bilski case tomorrow.

This Thursday, the Federal Circuit will hear oral arguments en banc in In re Bilski (No. 2007-1130), a case that will help define the scope of patentable subject matter.  Numerous amicus briefs have been filed in the case, and perhaps most interestingly, two of the amici, Bank of America and Regulatory DataCorp, have been granted permission to participate in the oral arguments.

More information about the case and its possible implications after the jump.

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There have been a few new things relevant to the USPTO in the past couple of weeks that we haven't had a chance to talk about.  They include more comments regarding the proposed rules regarding Markush claims, a new Patent Prosecution Highway with the European Patent Office, and a pilot program where patent applicants would be able to have an interview to discuss a proposed first office action with the examiner before the action issues.

Update:  We were remiss in not mentioning the new written description guidelines.

Click below for more detail regarding each of these developments.

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In a decision Tuesday, the Federal Circuit vacated a district court's order denying a declaratory judgment plaintiff attorney fees, but including a scathing description of alleged spoliation by the patentee/DJ defendant.  The Federal Circuit held that the district court's decision was an improper advisory opinion, and therefore vacated with instructions to dismiss.

The patentee, before bringing suit against several defendants, shredded over two million documents on what it called "shred day."   In an effort to avoid having a formal court opinion holding it had engaged in spoliation, the patentee offered to pay the DJ plaintiff's full attorneys' fees in the litigation, and provided an offer of judgment under Rule 68.  The plaintiff declined, and ultimately the court did not award attorney fees, but issued the spoliation order anyway.  On appeal, the Federal Circuit held that when a party essentially "throws in the towel," there is nothing left for the court to decide and therefore no jurisdiction exists.  In this case, the Federal Circuit determined that as soon as attorneys' fees were offered by a party, the case became moot and the trial court lacked any further jurisdiction to hear it or determine issues.  As a result, the order regarding spoliation was vacated.

More on Samsung Elecs. Co. v. Rambus, Inc. after the jump.

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In a decision yesterday, the Federal Circuit affirmed a district court's denial of the defendant's motion to dismiss for lack of subject matter jurisdiction.  The court also denied the defendant's post-verdict motion for judgment as a matter of law.  The defendant contended that because it shipped its allegedly infringing products f.o.b. from its place of business in Canada, it did not sell or import the product in the United States, and thus there was no subject matter jurisdiction over the plaintiff's infringement claims.  Alternatively, the defendant argued these same facts in support of its motion for judgment as a matter of law.

The Federal Circuit noted that the district court had erred in considering the issue of whether allegedly infringing products had been sold or imported in the United States as an issue implicating the court's subject matter jurisdiction.  Instead, this issue was simply an element of the claim to be proven that did not affect the court's ability to hear the case.  On the merits, the Federal Circuit rejected the contention that because legal title to the products changed in Canada that there was not a "sale" in the United States as contemplated by § 271(a), given that the customer was in the United States and the products were shipped there.  As a result, the court affirmed the finding of infringement.

More detail of Litecubes, LLC v. N. Light Prods., Inc. after the jump.

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In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction.  The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid.

The court considered two competing constructions of the same claim terms, one by the district court in this case, and another by a second district court in an unrelated case involving the same patent.  The Federal Circuit found the second district court's construction to be the proper one, and therefore reversed the construction on appeal (and the related finding of infringement).

More detail of Finistar Corp. v. DirecTV Group, Inc. after the jump.

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In a Wednesday decision, the Federal Circuit affirmed a district court decision that a patent holder's communications with a competitor's customers that the competitor's products were infringing were not objectively baseless, and therefore could not support state law tort claims of unfair competition, intentional interference with contractual relations, interference with prospective economic advantage, and trade libel.  The court noted that the patent holder had successfully defeated a motion for summary judgment of non-infringement before the ITC and an ALJ had found infringement of one of the patentee's patents.  Thus, it could not logically follow that the patentee's pre-litigation communications alleging patent infringement were objectively baseless.

The court also reaffirmed that in order for such communications to support state tort claims such as those asserted in this case, the assertions of infringement must be both objectively and subjectively baseless.  Here, the plaintiff attacked that patentee's opinion of counsel that infringement was occurring as incompetent, but the court noted that this was only relevant to whether the claims were subjectively baseless.  Because the claims were not such that "no reasonable litigant could reasonably expect success on the merits," the plaintiff could not show objective baselessness, and the court therefore did not even consider whether the claims were subjectively baseless.  All in all, the case confirms that it is extremely difficult for plaintiffs to prevail on these types of claims.

More concerning Dominant Semiconductors Sdn. Bhd. v. OSRAM GmbH after the jump,

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In an order yesterday, the Supreme Court asked the Solicitor General's office to file a brief providing the government's views on whether it should grant certiorari in Biomedical Patent Management Corp. v. California Department of Health Services (No. 07-956).  We previously blogged about the Federal Circuit's decision in this post.  The case deals with whether state agencies waive their Eleventh Amendment immunity from suit by actively enforcing their own patents.  Specifically, the questions presented in the petition are:

1. Whether a state's waiver of Eleventh Amendment immunity in one action extends to a subsequent action involving the same parties and the same underlying transaction or occurrence.
2. Whether a state waives its Eleventh Amendment immunity in patent actions by regularly and voluntarily invoking federal jurisdiction to enforce its own patent rights.

The last time the Court sought the Solicitor General's views on whether certiorari should be granted in patent case, the Solicitor General recommending granting certiorari.  That case was Quanta Computer Inc. v. LG Electronics, Inc., which was argued in January, with a decision still pending.  There is no specific timeframe for the Solicitor General's brief to be filed, but this case may be another to watch given the Court's recent interest in patent law.

Click below for links to the petition for certiorari and related filings.

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In a recent decision, the Federal Circuit addressed the issue of declaratory judgment jurisdiction in the context of the Hatch-Waxman Act. The court found that a unilateral covenant not to sue on a patent does not defeat declaratory judgment jurisdiction because there is still a "restraint on the free exploitation of non-infringing goods."

This case had a somewhat peculiar factual scenario:  the first generic company to file an ANDA, and therefore challenge a patent on a prescription drug, is rewarded with a 180-day exclusive marketing period after either (1) the patent is declared invalid or not infringed, or (2) the company begins marketing the drug (typically after the patent expires).  The FDA is prohibited from approving subsequent ANDAs until the exclusivity period ends.

Here, the first company to file was unsuccessful in getting a court to declare one of the two relevant patents (that expires in 2012) invalid or not infringed.  So, a subsequent ANDA filer attempted to trigger the first ANDA filer's exclusivity period by seeking to have the patents declared invalid or not infringed, so the subsequent filer could then begin marketing its generic before the patent expires.  In response, the patent holder granted the subsequent filer a covenant not to sue under the patent, attempting to prevent a judicial determination that might permit a generic from being introduced before the patent's expiration.  Based on the covenant not to sue, the district court dismissed the subsequent filer's declaratory judgment action as lacking a case or controversy under Article III.

The Federal Circuit reversed, finding that although the covenant not to sue removed any reasonable apprehension of suit, under the new "totality of the circumstances" test post-MedImmune, there was still a sufficient controversy to support Article III jurisdiction.  Essentially, the court saw that the patentee was trying to prevent any other drug company from getting a generic to market before 2012, which allowed a finding of a sufficient continuing case or controversy.  As a result, the court reversed the district court's holding that declaratory judgment jurisdiction and remanded the case for further proceedings.

More detail of Caraco Pharm. Labs., Ltd. v. Forest Labs., Inc. after the jump.

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