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Claims to “signal” with no reference to physical structure not patentable subject matter

In the first of two decisions today regarding the scope of statutory subject matter, the Federal Circuit held that claims directed toward a "signal" were not statutory subject matter under § 101. Earlier, the USPTO allowed claims directed toward a method of embedding data in a signal; the rejected claims were the reverse: they were […]

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Federal Circuit clarifies standard for proving joint infringement

The Federal Circuit issued a decision today affirming a district court's finding of noninfringement when a defendant neither carried out all of the steps of a method claim nor was responsible for the actions of the parties that did carry out all steps to the method claim. In doing so, the court clarified the proper […]

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If you just have the right to sue under a patent, don’t expect to actually be able to sue anyone

Yesterday, the Federal Circuit clarified the requirements for a party to attain standing to bring a patent infringement suit when the party does not hold all substantial rights in the patent. In defining what constitutes an "injury in fact" under the constitutional standing requirement, the court held that, when a party does not have all […]

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Seventh Circuit: Noncompete provision in license agreement reasonable, not patent misuse

In what the court described as "one of those non-patent patent cases," the Seventh Circuit yesterday affirmed a grant of summary judgment to a patentee who, in its license agreement, included a noncompete provision. The licensee had terminated the license, and argued the noncompete constituted patent misuse, and was therefore void. The court rejected this […]

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Plaintiff successfully skirts the minimum requirements for pleading, dismissal of complaint reversed

In a decision issued Friday, the Federal Circuit applied the Supreme Court's recent Twombly decision to the pleading requirements for patent and trademark causes of action. The court held that patent infringement plaintiffs need not specifically plead the claims infringed. Further, the court applied a similarly open standard to pleading trademark infringement cases. The pro […]

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More examination outsourcing by the USPTO?

According to a news release published today, the USPTO is exploring the feasability of having the Swedish Patent and Registration Office (PRV) perform the search and examination of international applications filed under the PCT in the U.S. receiving office. In the release, the USPTO notes that it receives about 50,000 international applications and about 400,000 […]

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Is fair use more valuable to the economy than copyright?

A study released this week by the Computer and Communications Industry Association (CCIA) attempts to quantify the value that fair use, the restriction on a copyright holder's ability to assert infringement claims, has to the U.S. economy. The study attempted to ascertain the economic output of "fair use industries," that is, either "industries that produce […]

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Tenth Circuit: Post-sale confusion relevant, but denial of injunction still affirmed

In a decision rendered yesterday, the Tenth Circuit affirmed a district court's denial of a preliminary injunction in a trade dress infringement case. The Tenth Circuit did join multiple other circuits in holding that post-sale confusion can be relevant to a claim of trade dress infringement. Evidence of post-sale confusion, however, was still insufficient evidence […]

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USPTO posts Examination Support Document Guidelines

The USPTO has posted guidelines for Examination Support Documents on its website devoted to the new claim and continuation limit rules. Examination Support Documents (ESDs) will be required for all patent applications exceeding the 5/25 claim limit that have not yet received a first office action on the merits as of November 1. The guidelines […]

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“Ordinary observer” can be commercial buyer when buyer uses designed item as part of retail product

In a recent decision, the Federal Circuit affirmed a district court’s order granting summary judgment of non-infringement of two design patents. Specifically, the court acknowledged that the Supreme Court's decision in Gorham Co. v. White held that an "ordinary observer" for purposes of design patent infringement cannot be an expert. Nevertheless, in this case, the […]

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