Today’s prosecution practice tip: don’t use the phrase “the present invention” in the specification In a decision last week, the Federal Circuit affirmed a district court's claim construction and its related summary judgment of noninfringement. The district court held the applicable claim term was narrower than the "lay understanding" of the term, based on the specification. Because the specification was clear, the district court refused to consider the prosecution […] Continue Reading →
Use of “mechanism” in claim without more may result in means-plus-function interpretation In a decision Monday, the Federal Circuit affirmed a district court's claim construction and related judgment of noninfringement. The decision focused on the issue of claim construction in means plus function claims. The critical limitation used the term "mechanism" without any additional structural elements, and as a result the district court construed it to be […] Continue Reading →
District court’s order dismissing the action with prejudice held to be nonfinal due to counterclaims In a decision Thursday, the Federal Circuit affirmed a district court's denial of a preliminary injunction, and held it did not have jurisdiction over the remainder of the appeal because there was no final judgment. It was undisputed there was no infringement under the district court's claim construction of the single element at issue. After […] Continue Reading →
Federal Circuit invalidates Patent on Nobel-Prize winning invention after 50 years of prosecution In an appeal from the Board of Patent Appeals and Interferences, the Federal Circuit affirmed the Board's rejection of the claims based upon obviousness-type double patenting over previously-granted related patents. The technical aspects of the invention are complex, but are overshadowed by the procedural aspects of this reexamination. The majority and dissenting opinions seem to […] Continue Reading →
Ninth Circuit: Pre-1923 published foreign works may still be copyrighted, depending on notice In a decision last week, the Ninth Circuit affirmed a district court's grant of summary judgment in favor of the plaintiff in a copyright case. The works at issue, sculptures by the famed artist Renior and coauthored by one of his assistants, Richard Guino, were created between 1913 and 1917, and first published in France […] Continue Reading →
Effective date of new BPAI appeal rules delayed pending completion of OMB review Gene Quinn at the PLI Patent Law Blog reports that the new BPAI appeal brief rules, which were scheduled to go into effect for all appeal briefs filed on or after tomorrow, December 10, will be delayed. The Office of Management and Budget is still considering the various submissions and comments regarding the rules, including […] Continue Reading →
Federal Circuit holds oral arguments in claim and continuation limit rules case On Friday, the Federal Circuit heard oral argument in the consolidated cases challenging the USPTO's new claim and continuation limit rules. You can download the audio of the arguments here. While it is, of course, too early to tell whether the Federal Circuit will affirm the permanent injunction against implementation of the rules, the tenor […] Continue Reading →
Substantial question regarding validity insufficient to defeat likelihood of success? In a recent decision, the Federal Circuit affirmed a district court's grant of a preliminary injunction concerning the manufacture of an extended release formulation of an antibiotic. In a lengthy opinion, the Federal Circuit applied the Supreme Court's obvious-to-try logic from KSR to pharmaceutical patents. Notably, the court used the unpredictability of the pharmaceutical arts […] Continue Reading →
Ninth Circuit: Copyright owner’s ambiguous reservation of rights clarified with extrinsic evidence In a recent decision, the Ninth Circuit reversed a district court's grant of summary judgment that a copyright holder did not have standing to sue for copyright, trademark, unfair competition, and related declaratory judgment claims. The case involved the film Gone in 60 Seconds, produced and directed in 1974 by H.B. "Toby" Halicki, and remade […] Continue Reading →