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Prior art disclosure of compound does not anticipate substantially separated enantiomer

In a recent decision, the Federal Circuit affirmed a district court's determination, after a bench trial, that the asserted claim of a patent had not been proven anticipated or obvious. The district court held that while the prior art showed the chemical structure of the claimed compound, it did not describe the separation of the […]

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Supreme Court of Canada tightens obviousness standard

The Supreme Court of Canada recently made significant changes to its obviousness standard for patentability. The case addressed a dispute arising between the brand-name pharmaceutical manufacturer, Sanofi, and the Canadian generic manufacturer, Apotex. The decision by the Supreme Court of Canada brings its obviousness standard closer to the standard recently set forth by the U.S. […]

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Reliance on initial expert for rebuttal sufficient to defeat summary judgment

In a decision Tuesday, the Federal Circuit reversed grants of summary judgment in favor of both parties. The defendant was granted summary judgment of noninfringement, and the plaintiff (and counterclaim defendant) was granted summary judgment on the grounds of no marking under 35 U.S.C. § 287. Both parties appealed. The Federal Circuit determined there was […]

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Continuation rules appeal decided; continuation limit invalid; RCE limit and ESD requirements valid

This morning the Federal Circuit released its opinion in Tafas v. Doll (formerly Tafas v. Dudas), the case addressing the validity of the USPTO's claim and continuation rules. The court holds all of the rules at issue are procedural rather than substantive, reversing the district court on this issue. In spite of this conclusion, the […]

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Explanation of prior art element in dependent claim insufficient to confer inventor status

In a decision Thursday, the Federal Circuit reversed a summary judgment of dismissal for lack of standing by the District Court for the Eastern District of Michigan. The district court held that one of the defendant's employees was a coinventor of the patent-in-suit, and because he had not joined as a plaintiff, the plaintiffs did […]

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Claim that infringing product was defendant’s “innovation” cannot support section 43(a) claim

In a decision last month, the Federal Circuit reversed a district court's denial of judgment as a matter of law from a jury award of $8,054,579 under § 43(a) of the Lanham Act. The plaintiff held a patent on a type of basketball, and the defendant (against whom summary judgment of infringement was granted) advertised […]

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Failure to raise KSR post-trial but pre-judgment results in waiver

In a recent decision, the Federal Circuit affirmed a jury's verdict of infringement, no obviousness, and no inequitable conduct. On appeal, the defendant for the first time argued the jury's verdict should be reversed in light of KSR. The Federal Circuit held the argument had been waived. The jury reached its verdict on December 8, […]

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Patent reform back again for 2009

Yesterday Senators Patrick Leahy and Orrin Hatch (chairman and ranking member of the Senate Judiciary Committee) and Representatives John Conyers and Lamar Smith (chairman and ranking member of the House Judiciary Committee) introduced the Patent Reform Act of 2009. Click below for more detail of the newly-introduced legislation, as well as links to other coverage […]

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Tenth Circuit: Insufficient proof of access dooms copyright infringement claim

In a recent decision, the Tenth Circuit affirmed a district court's finding of no copyright infringement after a bench trial and the findings for the defendants on related claims. The district court held there was insufficient evidence of copying, specifically that there was no evidence the defendants had access to the copyrighted work. The copyright […]

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Covenant to sue that does not cover future infringement insufficient to defeat DJ jurisdiction

In a recent decision, the Federal Circuit reversed a district court's dismissal for lack of declaratory judgment jurisdiction over a defendant's counterclaims for non-infringement, invalidity, and unenforceability of a patent. The plaintiff brought suit against the defendant for infringement in 2003, and on the eve of trial on the issues of invalidity and unenforceability, offered […]

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