In a recent decision, the Federal Circuit vacated and remanded a district court's judgment of noninfringement based on the parties' stipulation after claim construction.  The district court construed three claim terms in a way that the parties agreed rendered all accused products noninfringing, and the plaintiff appealed.

On appeal, the Federal Circuit reversed the district court's claim construction of each of the terms.  The opinion followed a straightforward Phillips analysis for each term.  Applying the revised construction, the court held remand was appropriate to determine the issue of infringement in the first instance, even though the defendant, for the first time at oral argument, claimed its devices did not infringe even under the revised constructions.

More detail of Paragon Solutions, LLC v. Timex Corp. after the jump.

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According to the website of Senator Patrick Leahy, President Obama will nominate David J. Kappos to be the next Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent And Trademark Office.  The nomination does not yet appear on the White House's nominations and appointments page (Update:  here is the While House press release).  Back in May, it was speculated that Mr. Kappos may be selected for the position.

Mr. Kappos served as vice president and general counsel for IBM and is on the board of directors of the AIPLA.  Other resources on Mr. Kappos:

• IP Watchdog
• "Why IBM's Kappos is Unfit to be the Next PTO Director"
  

HT:  271 Patent Blog.

In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment in a § 146 action brought after an interference proceeding at the USPTO.  The district court agreed with the Board's decision to award priority to the senior party in the interference, granting the senior party's motion for summary judgment that its specification satisfied the written description requirement for the interference count.  In coming to this conclusion, the district court construed the count by reference to the specification of the senior party's application, rather than by reference to the specification of the junior party's issued patent.  The district court also determined the proper standard of review was for substantial evidence, holding the junior party did not advance any "meaningful evidence" apart from what was considered by the Board.

The Federal Circuit reversed.  The court determined the district court erred both with regard to its determination that 1) the claims should be construed in light of the host application whose written description was being challenged and 2) that evidence proffered to the district court was insufficient to require de novo determination of the facts under § 146.  The court reconciled two prior decisions, In re Spina and Rowe v. Dror, dealing with the proper source for claim construction in an interference.  As described by the court:

[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.  When a party challenges a claim's validity under § 102 or § 103, however, [the Federal Circuit] and the Board must interpret the claim in light of the specification in which it appears.

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In a recent decision, the Federal Circuit addressed a variety of claim construction, infringement, and validity issues in an appeal from the International Trade Commission.  After construing five disputed claim terms, the ITC held one of four representative products infringed, the remaining three did not infringe, and one claim invalid as anticipated.  Both parties appealed.

The Federal Circuit affirmed in part, reversed in part, and remanded.  The court affirmed the ITC's construction of 4 of the 5 disputed terms.  However, the modification of one term resulted in the court vacating the ITC's determination of invalidity of one claim, as well as infringement of two of the four devices.  The Federal Circuit affirmed the finding of noninfringement of the other two devices, and remanded for reconsideration of the various issues in light of the revised construction.

More detail of Linear Tech. Corp. v. Int'l Trade Comm'n after the jump.

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In a recent decision, the Federal Circuit affirmed a district court's dismissal of a patent licensor's claims for breach of a license agreement and patent infringement. The non-exclusive licensee arranged to have third parties manufacture the licensed product, but the product was sold by the licensee. The patent owner argued this was a breach of the license because the license stated the only rights granted were the rights to "make, use, and sell," with all rights not explicitly granted reserved to the patent owner. The district court held this language did not prevent the licensee from having a third party make the product, because the grant of the right to make implicitly grants the right to "have made."

The Federal Circuit affirmed. The court noted the controlling authority on point was a 1964 Court of Claims case, Carey v. United States. There, the Court of Claims held the right to "make" includes the right to engage others to do all of the work connected with its production absent express language to the contrary. Here, the Federal Circuit held because such a right is implicitly granted, the reservation of rights did not prevent the "have made" rights from being granted. As a result, utilizing a third party manufacturer did not constitute a breach of the license agreement such that the licensee may be subject to an infringement action, and the Federal Circuit affirmed the district court's dismissal of the case.

More detail on Corebrace, LLC v. Star Seismic, LLC after the jump.

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