Computer-implemented means-plus-function claim invalid when no algorithm disclosed in specification

In a decision Friday, the Federal Circuit affirmed a final judgment of invalidity of all claims of a patent indefinite. The claims had several means-plus-function clauses that were computer-implemented, however no algorithms for implementing the claimed functions were disclosed in the specification. The district court held the claims invalid because there was no "structure" (i.e., […]

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Patent for better mousetrap obvious, secondary indicia could not rebut “strong prima facie case”

In a decision Friday, the Federal Circuit addressed the issue of post-KSR obviousness and fraudulent misrepresentation. Regarding obviousness, the court held that the secondary indicia of nonobviousness simply could not overcome a "textbook case" of claims involving "a combination of familiar elements according to known methods that does no more than yield predictable results." Interpreting […]

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Patent ownership may change by operation of law, including operation of foreign law

In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership. The inventor of the patent died intestate as the only owner of the patent. While his two daughters executed transfers of ownership to the inventor's widow, the […]

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Patentee cannot recapture claim scope disavowed during prosecution to prove infringement

In a decision Friday, the Federal Circuit affirmed a district court's claim construction and its concomitant grant of summary judgment of noninfringement, as well as its denial of attorney fees under § 285. The district court held the patentee had, during prosecution of the patent at issue, made a clear and unmistakable disavowal of claim […]

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271(e) safe harbor applies to both product and method claims in ITC proceedings

In a ruling today, the Federal Circuit affirmed in part a decision by the International Trade Commission (ITC) concerning the application of 19 U.S.C. § 1337 and 35 U.S.C. § 271(e)(1) to imported products and products imported produced via a patented process. The main issue before the court was whether the safe harbor against infringement […]

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USPTO to modify requirements for withdrawal from representation effective May 12

In a notice released yesterday, the USPTO announced that it will be changing the requirements for an attorney or agent to withdraw from representation of a client in a patent matter before the Office. Currently, the requirements for withdrawal are covered by 37 C.F.R. § 10.40 and MPEP 402.06, and require that the practitioner provide […]

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15 different amendments proposed to Senate version of Patent Reform Act of 2007

The Patent Reform Act of 2007 (S.1145) keeps plodding along in the Senate. Just over a month after the Senate Judiciary Committee released its report on the bill, there have now been 15 amendments circulated for possible consideration when the full Senate takes up the bill, with the potential for more to come before the […]

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Section 121 safe harbor applies only to divisional, not continuation-in-part; later patent invalid

In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement. There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds. […]

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Ninth Circuit: “Exclusive” license from only one copyright co-owner really a nonexclusive license

In a decision last week, the Ninth Circuit affirmed a district court's dismissal of a copyright infringement claim for lack of standing, as well as several related claims. The plaintiff obtained an "exclusive" license for one of the exclusive rights from a single co-owner of several copyrighted works. However, because the plaintiff only obtained the […]

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Second Circuit: Famous marks doctrine doesn’t support NY unfair competition claim

In a recent decision, the Second Circuit decided the one outstanding issue from a case it had previously decided in March 2007 (previously blogged here), namely whether the "famous marks" doctrine the court held Congress has not yet incorporated into federal trademark law might support a New York common law claim for unfair competition. The […]

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