Filewrapper

More new USPTO rules on the way, this time for information disclosure statements and Markush claims

The USPTO rulemaking machine just keeps chugging along. In today's Federal Register, there are new USPTO proposed rules regarding claims using "alternative language," such as Markush claims. Also, on July 27, the USPTO submitted new rules regarding information disclosure statements (IDSs) to the OMB for review. These rules look as though they adhere to the […]

Continue Reading →

Priority claim under section 119 denied; foreign application not filed “on behalf of” U.S. applicant

Today the Federal Circuit addressed whether priority to an earlier-filed foreign application may be claimed under § 119(a) if there was no legal relationship between the foreign applicant and the U.S. applicant at the time the foreign application was filed. The court held that the right of priority under § 119(a) is personal and determined […]

Continue Reading →

Judge sanctions Qualcomm for concealing over 200,000 pages of documents, providing false testimony

It's been a rough week for Qualcomm. On Monday, the Bush administration let stand the ITC ruling barring import of mobile phones using certain Qualcomm chips unless a license fee is paid to Broadcom, a competing company who holds patents covering the power management technology used in the chips. Also Monday, a federal judge in […]

Continue Reading →

$1.5 billion infringement verdict against Microsoft vacated

A judge in the Southern District of California yesterday set aside a $1.5 billion infringement verdict against Microsoft in favor of Alcatel-Lucent (more detail on the facts of the case can be found in this post). The judgment was the largest ever in a patent infringement lawsuit, and has been used as an example (see […]

Continue Reading →

Federal Circuit reverses dismissal of DJ action; sufficient case or controversy exists

The Federal Circuit recently vacated the District Court for the Southern District of California's judgment granting a motion to dismiss five plaintiffs' (four joined on the appeal) declaratory judgment complaints for lack of subject matter jurisdiction, and remanded the case back to the district court to determine in its discretion whether to entertain the declaratory […]

Continue Reading →

Statements in specification lead to narrower claim construction and noninfringement

In a decision on Friday, the Federal Circuit affirmed a district court decision granting summary judgment of noninfringement. The only claim at issue required motors to apply a "pushing" force. The defendant's motors applied a "pulling" force that was, through intermediate apparatus, translated to a "pushing" force, but the court held that the patentee had […]

Continue Reading →

Summary of proposed final KSR examining guidelines surfaces

The Patent Prospector is reporting that the summary of the USPTO's post-KSR obviousness examination guidelines recently sent to OMB has apparently surfaced. Note that this summary is not confirmed, but it comes from a typically reliable source. Either click below or head over to the Patent Prospector to read the summary. Update (11:15): another source […]

Continue Reading →

Ninth Circuit: Reversible error to only consider one of the likelihood of confusion factors

In a trademark case yesterday, the Ninth Circuit held that the similarity-of-the-marks factor could not be considered exclusive of the other likelihood of confusion factors in determining trademark infringement. In doing so, the court reversed the grant of summary judgment against the defendant's counterclaims of trademark infringement, as well as the defendant's counterclaims for copyright […]

Continue Reading →

Federal Circuit affirms preemption of D.C.’s Prescription Drug Excessive Pricing Act of 2005

In a recent decision, the Federal Circuit affirmed the District Court for the District of Columbia's judgment that the federal patent laws preempted the District of Columbia's Prescription Drug Excessive Pricing Act of 2005. More details of Biotechnology Indus. Org. v. District of Columbia after the jump. The challenged legislation at issue is the Excessive […]

Continue Reading →

Second Circuit: Merger doctrine bars copyright in commodities settlement prices

The Second Circuit issued a decision yesterday applying the merger doctrine of copyright to settlement prices on a mercantile exchange. The court affirmed summary judgment holding that the settlement prices were not copyrightable, because the expression of the prices (a single number) merged with the idea that was expressed (the fair market value for each […]

Continue Reading →

Stay in Touch

Receive the latest news and updates from us and our attorneys.

Sign Up