Close but no cigar: ITC gets 4 of 5 claim constructions correct, but must reconsider 2 issues

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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Board's determination of priority, while "very close call," supported by substantial evidence

In a recent decision, the Federal Circuit affirmed a decision of the Board of Patent Appeals and Interferences awarding priority of invention to the senior party in an interference proceeding.  The Board held there was sufficient corroborating evidence of an inventor's testimony that the senior party appreciated its reduction to practice worked and met the key limitation of the interference count. 

The Federal Circuit affirmed.  On appeal, the junior party only challenged the Board's interpretation of the corroborating evidence and not the underlying conclusion of corroboration based on that evidence.  While the court held it was "a very close call," based on the deferential substantial evidence standard of review, the court affirmed the Board's decision.

More detail regarding Henkel Corp. v. Procter & Gamble Co. after the jump.

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Ninth Circuit: Patent law terms in employment agreement should be given patent law definitions

In a recent decision, the Ninth Circuit held a district court's jury instructions regarding construction of the patent ownership provisions of an employment agreement erred in applying contract law rather than patent law.  

The court determined that jury instructions defining the terms "conceive," "reduce to practice," and "Work of Dr. Yu" (a possible coinventor) required application of patent law to determine whether co-inventorship existed for both conception and reduction to practice of an invention, and whether conception and/or reduction to practice took place while using the employer's facilities.  The Ninth Circuit held the district court erred in applying agency law to determine whether a second researcher's actions triggered the patent ownership provisions of the "employed" researcher.  The court remanded the case and ordered a new trial with proper jury instructions.

More detail of Los Angeles Biomedical Res. Inst. v. White after the jump.

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Corroboration of reduction to practice must corroborate that invention worked for intended purpose

In a decision today, the Federal Circuit affirmed the BPAI's decision in an interference proceeding awarding priority to the senior party.  The junior party attempted to show an actual reduction to practice before the senior party's priority date.

While the junior party offered evidence of an earlier actual reduction to practice, the corroborating evidence was insufficient.  The corroborating witness just stated that he saw the device in question in the junior party's laboratory.  There was no corroborating evidence that the device actually worked for its intended purpose, and so the corroboration was insufficient to establish an earlier reduction to practice.  As a result, the court affirmed the decision to award priority to the senior party.

More detail of In re Garner after the jump.

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Inventors' appreciation of invention intones interference's inversion

On appeal from the Board of Patent Appeals and Interferences (BPAI), the Federal Circuit today reversed a priority determination, finding that the junior party had shown conception and reduction to practice before the senior party's filing date.  As a result, the case was remanded to determine whether the senior party could prove earlier priority.

More details of the case after the jump.

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