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Another post-MedImmune declaratory judgment jurisdiction decision

The Federal Circuit addressed the requirements for declaratory judgment jurisdiction in a published decision for the second time this week. This time the parties are pharmaceutical companies, but the result is the same: the lower court, applying the old "reasonable apprehension of suit" standard, found no jurisdiction, the Federal Circuit, applying a post-MedImmune standard reverses, […]

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Patent Term Extensions: A Leap Frog of Sorts to Set Expiration Date

In a case before the Federal Circuit, the court affirmed the district court's decision that a patent term extension under the Hatch-Waxman Act, 35 U.S.C. § 156, may be applied to a patent subject to a terminal disclaimer under 35 U.S.C. § 253. The Federal Circuit found that the language of § 156 is unambiguous […]

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Second Circuit rejects famous marks doctrine

In a recent decision, the Second Circuit held that a trademark holder who has abandoned use of its mark in the United States cannot prevent others from using the mark because the mark is famous in the United States based on use in a foreign country. This concept is referred to as the "famous marks […]

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Trademark infringement helping the needy?

In November, 2006, approximately $200,000 worth of action figures were detained at the United States-Canada border by US Customs and Border Protection. They were stopped under the authority granted to the US Customs and Border Protection office, to prevent importation of goods that violate another company’s trademark or copyright rights. In order to take advantage […]

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USPTO releases strategic plan for 2007-2012

Today the USPTO released its strategic plan for the next five years, 2007-2012. The summary is available here, and the full plan here. Some thoughts on the strategic plan after the jump.After a quick read-through, much of the strategic plan appears to be a “let’s keep doing what we’re doing right and stop doing what […]

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Federal Circuit considers DJ jurisdiction post-MedImmune: Is an offer of license now enough?

In a very interesting opinion, the Federal Circuit today addressed what is required to support jurisdiction for a declaratory judgment by a party under threat of a possible patent infringement lawsuit. This is the first substantive discussion of the issue since the Supreme Court's decision in MedImmune, where the Court held that a patent licensee […]

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Wall Street Journal on Viacom v. YouTube

Walter Mossberg of the Wall Street Journal has a column discussing the Viacom v. YouTube case (previously blogged about here). Mr. Mossberg thinks the problem is not confined to the particular dispute between Viacom and YouTube/Google, but rather is indicative of a need for greater guidance in copyright law from Congress. The Digital Millennium Copyright […]

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Be careful what you wish for: broad claims found invalid

In another case making a return trip to the Federal Circuit, the court held that under its broad claim construction decided in the first appeal, the asserted claims were invalid in two patents as not enabled and in two more as anticipated. In order to secure a finding of infringement, the patentee, Liebel-Flarsheim, argued for […]

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Obviousness: A Primer by the Federal Circuit

In a case before the Federal Circuit, the district court's holding that a patent was valid and enforceable was rejected, not only because the Federal Circuit found the holding incorrect, but also because the holding reflected a serious misconception regarding the proper burden of proof each party bears in patent litigation. The Federal Circuit set […]

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Inequitable Conduct Found in False Statements and Deception

In a case before the Federal Circuit, the District Court’s conclusion that Cantor’s patent was unenforceable due to inequitable conduct was affirmed. The matter before the Court involved a patent for a method and system for trading financial instruments. Specifically, Cantor developed a system that would automate the trading process and avoid the use of […]

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