Marketing methods not patentable subject matter: no machine or transformation In a recent decision, the Federal Circuit applied the machine-or-transformation test from Bilski to affirm the rejection of all pending claims in a patent application by the Board of Patent Appeals and Interferences. The claims at issue related to methods of marketing products and "paradigms" for marketing software. The Board held all claims were not […] Continue Reading →
Pirate Bay operators guilty of criminal infringement in Sweden; no webcast of US file sharing case In the past day, there has been two interesting bits of news in the world of cases alleging copyright infringement by way of peer-to-peer file sharing. The first is that the individuals who operate and maintain the servers that host The Pirate Bay, the world's largest bittorrent tracker, were held to have committed criminal copyright […] Continue Reading →
Use of court-appointed expert not abuse of discretion, even when jury told of neutrality In a recent decision, the Federal Circuit held it was not an abuse of discretion for a district court to retain an independent expert pursuant to Rule 706 to assist the jury in understanding the technology relating to a complicated electrical patent. The district court was frustrated with the technology, and observed "the notion that […] Continue Reading →
Estoppel applies to all added limitations in claims, including when present in unamended claims In a decision Friday, the Federal Circuit affirmed a district court's grant of summary of no literal infringement and that prosecution history estoppel barred application of the doctrine of equivalents. During prosecution of the patent, a total of three limitations from two different dependent claims were added to the asserted claim in separate amendments, although […] Continue Reading →
Disclosure of compounds without link to claimed method fails to meet written description requirement In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law after a jury determined the asserted claims of an invention were not invalid under the written description requirement. The court, however, affirmed the district court's determination of no inequitable conduct.The Federal Circuit held the jury lacked […] Continue Reading →
Second Circuit limits 1-800 Contacts; keyword advertising can be use in commerce In a recent decision, the Second Circuit reversed a district court's grant of a motion to dismiss in a trademark infringement case. The district court, relying on the Second Circuit's 2005 decision in 1-800 Contacts, Inc. v. WhenU.com, Inc., held Google's use of its Adwords and Keyword Suggestion Tool to cause advertising to appear when […] Continue Reading →
Sales of products by party under unconditional covenant not to sue exhaust patent rights In a decision Wednesday, the Federal Circuit affirmed a district court's finding that a patentee's claims for patent infringement were barred by patent exhaustion in view of a settlement agreement between the patentee and a previous defendant in an infringement suit. The patentee previously sued a third party, and the suit was resolved by a […] Continue Reading →
Nondisclosure of test results disclosed to testifying expert results in sanctions, but not dismissal In a recent decision, the Federal Circuit affirmed-in-part and reversed-in-part a district court's ruling sanctioning the plaintiffs and their attorney in a case both monetarily and by striking the plaintiffs' pleadings. The sanctionable conduct was the withholding of certain test results of the allegedly infringing product that arguably showed the product did not infringe. The […] Continue Reading →
Board’s determination of priority, while “very close call,” supported by substantial evidence In a recent decision, the Federal Circuit affirmed a decision of the Board of Patent Appeals and Interferences awarding priority of invention to the senior party in an interference proceeding. The Board held there was sufficient corroborating evidence of an inventor's testimony that the senior party appreciated its reduction to practice worked and met the […] Continue Reading →
Kubin decided: Federal Circuit provides guidance for application of KSR in biotechnology Today the Federal Circuit decided the appeal in In re Kubin, a case dealing with how the Supreme Court's KSR decision will apply in the field of biotechnology. The decision is available here. We previously blogged about the BPAI decision here and the Federal Circuit's oral arguments here. Those posts have detailed descriptions of the […] Continue Reading →