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Category: Anticipation


USPTO Director Andrei Lancu Takes a Look at Early Prosecution
May 24, 2018
Post by Oliver P. Couture, Ph.D.
This week, the USPTO Director, Andrei Iancu, testified before the House Judiciary Committee. In his written statement Director Iancu wrote on topics related to early prosecution that would result in lower costs to clients and would speed up the process of obtaining a patent. A new pilot program that will allow for a pre-search Examiner interview is being planned. The goal of the interview is to allow claim i.......
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Internet Discussion Systems as Prior Art
June 10, 2014
Post by Blog Staff
The Federal Circuit's recent decision inSuffolk Technologies, LLC, v. AOL Inc., and Google Inc., adds another item to the list of "printed publications" that may preclude patenting of a claimed invention: posts on internet newsgroups. In June 2012 Suffolk Technologies, LLC sued Google Inc. for infringement of U.S. Patent No. 6,081,835 ("the '835 patent"), related to "methods a.......
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New and Useful - August 26, 2013
August 26, 2013
Post by Blog Staff
· InUniversity of Utah v. Max-Planck-Gesellschaft, the Federal Circuit held that a patent lawsuit between a state university and the officers of another state university is not a controversy between two states. The case began when the University of Utah (“UUtah”) sued the Max Planck Institute and the University of Massachusetts (“UMass”) to correct inventorship of two paten.......
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New and Useful - January 31, 2013
January 29, 2013
Post by Blog Staff
· In Soverain Software LLC v. Newegg Inc. the Federal Circuit vacated in part and reversed in part an Eastern District of Texas decision finding Newegg Inc. liable for infringement of U.S. Patent Nos. 5,715,314, 5,909,492, and 7,272,639, all relating to electronic commerce. The Federal Circuit offered clarifying insight on the obviousness doctrine. The background facts are as follows: Soverain Soft.......
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Another Billion Dollar Patent Verdict
January 03, 2013
Post by Blog Staff
Another billion dollar verdict has been handed out in a patent case. Read the verdict in Carnegie Mellon University v. Marvell Technology Group, LTD. here. This latest case continues a string of billion dollar verdicts highlighted by Jonathan Kennedy in the latest edition of MVS Briefs. Carnegie Mellon brought suit alleging infringement of two of its patents, Patent No. 6,201,839 and Patent No. 6,438,180, relat.......
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Clogging up the Federal Circuit
February 19, 2010
Post by Blog Staff
On December 17, 2009, the Court of Appeals for the Federal Circuit addressed in International Seaway Trading Corp. v. Walgreens Corp. whether the "ordinary observer" test from Egyptian Goddess likewise applies to anticipation of design patents. In Egyptian Goddess, the CAFC dropped the "point of novelty" test for design patent infringement and adopted the "ordinary observer" test fr.......
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Dependent claim can't be obvious when indepdendent claim is not; verdict vacated as inconsistent
October 19, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness. The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness: the jury held a dependent claim obvious but the independent claim from which .......
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Manuscript filed with copyright office not necessarily publicly available as of filing date
September 25, 2009
Post by Blog Staff
In a decision Tuesday, the Federal Circuit held the USPTO had not provided sufficient evidence that an inventor's manuscript was publicly accessible, and therefore available as prior art under § 102(b), before the critical date of the application. As a result, the court reversed the Board of Patent Appeals and Interferences.At issue was the inventor's own manuscript. It was undisputed that the man.......
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Close but no cigar: ITC gets 4 of 5 claim constructions correct, but must reconsider 2 issues
June 15, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit addressed a variety of claim construction, infringement, and validity issues in an appeal from the International Trade Commission. After construing five disputed claim terms, the ITC held one of four representative products infringed, the remaining three did not infringe, and one claim invalid as anticipated. Both parties appealed.The Federal Circuit affirmed in part, r.......
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Supreme Court of Canada tightens obviousness standard
March 23, 2009
Post by Blog Staff
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. Supreme Court in KSR v. Teleflex.......
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Prior art disclosure of compound does not anticipate substantially separated enantiomer
March 23, 2009
Post by Blog Staff
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 two enantiomers of the compound, nor did it describe the appropriate salt form .......
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Substantial question regarding validity insufficient to defeat likelihood of success?
December 09, 2008
Post by Blog Staff
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 to find that, despite a.......
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Federal Circuit reaffirms anticipatory reference must have all elements as arranged in the claim
October 31, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's finding of indefiniteness but reversed the district court's holding of anticipation of other claims. The district court held the means-plus-function limitations did not have corresponding structure disclosed in the specification, rendering them indefinite, and that the combination of two examples in a prior art publication anticipated t.......
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BPAI: 102(e) art can be effective prior art as of provisional priority date
October 29, 2008
Post by Blog Staff
In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference. In affirming the examiner, the Board determined the reference was prior art as of its provisional date, as long as the relied-upon disclosure .......
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ITC cannot enter limited exclusion order against non-parties
October 21, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit vacated a limited exclusion order issued by the International Trade Commission in the most recent dispute between Qualcomm and Broadcom. The case involved alleged infringement of one of Broadcom's patents relating to chips for wireless communication, specifically directed toward power saving technology. Although Qualcomm was the only respondent in the proceedin.......
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Anticipation no longer the epitome of obviousness? Claims can be anticipated but nonobvious
October 16, 2008
Post by Blog Staff
The Federal Circuit recently affirmed a district court's finding of non-willful infringement for one product, reversed its claim construction and related finding of noninfringement of a second product, and vacated its judgment as a matter of law on the issue of anticipation. The district court, at the charge conference near the end of the jury trial in this case, decided not to instruct the jury on anticipati.......
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General disclosure in prior art not enabling for specific pharmaceutical compound's use in treatment
October 07, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's holding that a prior art patent was not enabling and thus did not anticipate the patent-in-suit. Applying the In re Wands factors, the district court held undue experimentation would be required in order to produce the claimed invention based on the prior art's disclosure. The Federal Circuit affirmed, and observed the asserted pri.......
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When factual inquiries underlying obviousness determination disputed, summary judgment improper
September 25, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's summary judgment of no anticipation, no invalidity for failure to comply with the written description requirement, and infringement, but reversed the district court's summary judgment of no invalidity based on obviousness. In an unusual procedural move, the parties stipulated that for the issues on which both parties moved for summary j.......
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Federal Circuit: The difference between substantial cure and full cure is not insubstantial
August 22, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a grant of summary judgment of anticipation and obviousness. While the court disagreed with the district court's conclusion that the prior art expressly anticipated the asserted claims as a matter of law, the court did conclude that the prior art inherently disclosed the relevant limitations as a matter of law. Further, because the patentee's obviousn.......
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Irreparable harm to exclusive licensee cannot support injunction; willfulness vacated post-Seagate
August 20, 2008
Post by Blog Staff
In a decision Monday, the Federal Circuit addressed a range of issues and ultimately affirmed a district court's denial of injunctive relief and, in light of the intervening Seagate decision, vacated and remanded the case for reconsideration regarding willfulness. The court also affirmed the district court's finding of no invalidity and the infringement of some claims under the doctrine of equivalents. .......
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BPAI: when prior art teaches away, expectation of success cannot support obviousness rejection
August 16, 2008
Post by Blog Staff
In a recent precedential decision by the Board of Patent Appeals and Interferences, the board reversed an Examiner's rejections based on double patenting, anticipation, and obviousness. The Board held the Examiner inappropriately rejected the claims for double patenting because there was insufficient evidence to show the compositions claimed in the prior art possessed the viscosity level claimed in the curren.......
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Finding of inequitable conduct without considering materiality vacated
August 06, 2008
Post by Blog Staff
In a decision on Friday, the Federal Circuit reversed a district court's summary judgment of invalidity and noninfringement and subsequent finding of inequitable conduct. The court also vacated the district court's exceptional case finding and the associated award of attorney's fees.The plaintiff was initially awarded partial summary judgment of infringement of six patents. The district judge then a.......
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New appeallate counsel insufficient reason to consider arguments not raised before district court
May 21, 2008
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court's decision finding two claims of a patent anticipated. The district court, adopting a magistrate judge's Report and Recommendation, held that the claims were invalid and granted summary judgment. After retaining new counsel for the appeal, the patentee argued the prior art did not anticipate the claims based on a claim element not argued.......
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Two district courts, one correct claim construction; $103 million damage award vacated
April 25, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction. The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid.The court considered two competing constructions of the same .......
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License under method patent not limited to use with licensor's products absent express limitation
April 18, 2008
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed-in-part, vacated-in-part, and reversed-in-part a district court's decision regarding two patents. The district court held the broadest claims of both patents invalid and not infringed, and dismissed claims of inequitable conduct relating to the patents.The Federal Circuit affirmed with respect to one patent, but vacated and reversed with respect to the ot.......
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When priority not decided at PTO patentee bears burden of showing entitlement to earlier application
April 14, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity with respect to all asserted claims of two patents. More particularly, the court held that the claims of the patents were not entitled to the priority date of an earlier-filed application, and were therefore anticipated by intervening prior art. The original application was filed in 1997, however th.......
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When market entry fee part of damages for patent infringement, permanent injunction inappropriate
January 21, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a finding of infringement of a patent relating to the detection and classification of Hepatitis C Virus, but remanded the case for a determination of anticipation. In arguably the most interesting aspect of the decision, the court vacated the permanent injunction entered against the defendant. The plaintiff asked for and was awarded damages to compensate for th.......
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Paper posted on public FTP site not necessarily printed publication; summary judgment reversed
January 10, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit vacated and remanded the district court's determination that the plaintiff's patents-in-suit were invalid as anticipated by another paper that was publicly available via the patentee's FTP site before the critical date for the span of one week, finding genuine issues of material fact as to whether the paper was "publicly accessible" as required by.......
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Jury verdict finding Microsoft's product activation systems infringed two patents affirmed
November 19, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's finding of infringement and no invalidity of patents relating to the reduction of software piracy. At issue was a finding of non-infringement based on the claim construction of claim limitations found in patents held by z4 Technologies. In affirming the district court decision, the court found that a reasonable juror could find that Micr.......
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USPTO's claim construction not reasonable, anticipation rejection reversed
September 27, 2007
Post by Blog Staff
In a decision today, the Federal Circuit reversed the rejection of claims in a pending application as anticipated. The relevant limitation was "flexible polyurethane foam reaction mixture." The examiner and BPAI interpreted this to encompass any mixture that ultimately produces a flexible polyurethane foam. The alleged anticipatory reference initial produced a rigid foam, but then was mechanically c.......
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Federal Circuit affirms finding of no anticipation or obviousness, no mention of KSR to be found
September 06, 2007
Post by Blog Staff
The Federal Circuit yesterday affirmed a decision by the District Court for the District of Delaware upholding the validity of Reissue Patent 34,712 ("the '712 patent") and the injunction preventing infringement of the '712 patent. Specifically, the court affirmed the district court's decision that the prior art reference relied upon for the defendants' anticipation argument was not ena.......
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Another patent invalid after KSR, with help from an innovative online litigation strategy
August 15, 2007
Post by Blog Staff
Peter Zura has an interesting post about a case in the Eastern District of Texas (one of the most popular districts for patent cases to be filed) where a patent was held to be both anticipated and, failing that, obvious in light of KSR. The court also addressed the concept of joint infringement, which the Federal Circuit has yet to address in detail, and found that a showing of agency or concerted action is n.......
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Federal Circuit panel splits on inherency case
April 24, 2007
Post by Blog Staff
In a second appeal involving patents relating to the original "Purple Pill®," a panel of the Federal Circuit split on whether an earlier patent application by a Korean company inherently anticipated one of AstraZeneca's patents covering the popular heartburn medication Prilosec® (omeprazole). The panel majority held that a process disclosed in a Korean patent application by Chong Kun Dan C.......
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Be careful what you wish for: broad claims found invalid
March 22, 2007
Post by Blog Staff
In another case making a return trip to the Federal Circuit, the court held that under its broad claim construction decided in the first appeal, the asserted claims were invalid in two patents as not enabled and in two more as anticipated. In order to secure a finding of infringement, the patentee, Liebel-Flarsheim, argued for the broader claim construction in the first appeal, only to be unable to .......
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No Crying Over Spilled Milk - Held to Claim Construction During Prosecution
February 23, 2007
Post by Blog Staff
Nouri Hakim appealed the decisions of the District Court of Western Louisiana granting Cannon Avent Group's motion for summary judgment that Avent did not infringe one of Hakim's patents ("the '931 patent") and finding another of Hakim's patents invalid ("the '620 patent"). The patents-in-suit involved the art of non-spill drinking cups and the apparatus in the spout of the cup which prevents ac.......
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Working until the end of the year, Federal Circuit addresses a Law School Exam Type Case
December 26, 2006
Post by Blog Staff
The Federal Circuit affirmed a Southern District of Indiana decision that generic drug makers IVAX Pharmaceuticals, Inc, Dr. Reddy's Labratories, Ltd. (DRL) and Teva Pharmaceuticals USA, Inc. infringed Eli Lilly and Company's (Lilly) U.S. Patent no. 5,229,382. The '382 Patent claims chemical compound olanzapine and the use of the compound to treat schizophrenia. The infringers attempted to show that the '382 was.......
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Federal Circuit Addresses On Sale Bar
December 18, 2006
Post by Blog Staff
In Plumtree Software, Inc. v. Datamize, LLC, the Federal Circuit Court of Appeals revisited the issue of determining when an invention is on sale within the meaning of 35 U.S.C. 102(b). A claimed invention is considered to be on sale under ? 102(b) if the invention is sold or offered for sale more than one year before the filing date of the patent application. If the applicant files a patent application after th.......
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Enablement standard for prior art less stringent than enablement standard for patents
November 21, 2006
Post by Blog Staff
The Federal Circuit, in Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc., discussed the requirements for a prior art reference to be enabled, and thus anticipate a patent. Aventis is the owner of U.S. Patent No. 5,527,814, covering the use of the compound riluzole to treat ALS, commonly known as Lou Gehrig's disease. Impax wanted to produce a generic version of riluzole,so it filed an abbreviated new dru.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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