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Category: En banc


Federal Circuit Holds that USPTO Can't Deny Trademarks as Offensive or Disparaging
December 23, 2015
Post by Jonathan L. Kennedy
Jonathon L. Kennedy On Tuesday, December 22, 2015, the Federal Circuit  held that a portion of § 2(a) of the Lanham Act is unconstitutional in a 10-2 decision. The decision was made in In re Simon Shiao Tam, an appeal from the Trademark Office. Mr. Tam is a member of an Asian American rock band called THE SLANTS. The band applied for a trademark for its name. The Trademark Office.......
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Expanded Powers of the USITC
September 03, 2015
Post by Blog Staff
Under 19 U.S.C. §1337(b)(1) the U.S. International Trade Commission (USITC) is authorized to investigate allegations of unfair trade acts in the importation of articles that infringe a valid United States patent.  If a violation of the statute is found, the USITC issues an exclusion order that bars the importation of some or all of the infringing products and may issu.......
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The Continuing Saga of the First IPR at the Federal Circuit
July 09, 2015
Post by Blog Staff
    The Federal Circuit has simultaneously issued an order and an opinion in In re Cuozzo Speed Technologies, LLC, previously discussed on Filewrapper® as being the first appeal arising from an inter partes review ("IPR‚¬) . The order issued by the .......
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Federal Circuit Deems Software Patent Ineligible, Provides Little Certainty
May 17, 2013
Post by Blog Staff
In its recent en banc decision inCLS Bank v. Alice Corp, the Federal Circuit has affirmed the finding of subject matter ineligibility of Alice Corp's method and software for management of risk in financial transactions through use of a third party intermediary. The ten-member panel produced seven different decisions, but did not produce any majority opinion. However, seven judges agreed that the method and c.......
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Another issue headed for en banc review by the Federal Circuit: How to assess redesigned products
May 17, 2010
Post by Blog Staff
In an order Friday, the Federal Circuit granted en banc review of its second case in the past three weeks and its third over the past three months. This time it's a case involving Tivo relating to the contempt proceedings against Echostar relating to Tivo's DVR patents. After Echostar was found to infringe Tivo's patent and was permanently enjoined from infringement, it redesigned its DVR software.......
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Federal Circuit to consider overhaul of inequitable conduct standards en banc
April 26, 2010
Post by Blog Staff
In an order today, the Federal Circuit granted rehearing en banc in Therasense, Inc. v. Becton, Dickinson & Co. The order indicates the court will be reconsidering its precedent on virtually the entire gamut of issues relating to inequitable conduct. Specifically, the questions presented are:Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?If so, how? In parti.......
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En banc Federal Circuit reaffirms written description requirement is separate from enablement
March 24, 2010
Post by Blog Staff
Monday the Federal Circuit released its en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lily & Co., where the court addressed whether 35 U.S.C. § 112 has a written description requirement separate and apart from the enablement requirement. A substantial majority of the court (10 judges) joined in the majority opinion, with two judges dissenting. As summarized by the court:We . . . read the statu.......
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Federal Circuit to consider en banc whether new evidence may be introduced in a section 145 action
February 18, 2010
Post by Blog Staff
In an order yesterday, the Federal Circuit has agreed to consider the scope of evidence to be considered in an action filed under 35 U.S.C. § 145 to obtain review of a decision of the Board of Patent Appeals and Interferences. The case is Hyatt v. Kappos. Specifically, the court ordered briefing on the following issues:(a) Are there any limitations on the admissibility of evidence in section 145 proceedings.......
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En banc Federal Circuit to address potential patent misuse issues in license practices
October 20, 2009
Post by Blog Staff
The Federal Circuit has agreed to hear en banc an interesting issue with regard to the potential for patent misuse in licensing. The case is Princo Corp. v. ITC. At issue is the patent pool related to the technology used for CD-R and CD-RW discs. The alleged infringer, Princo, admitted infringement before the ITC, but asserted the patents unenforceable due to patent misuse. The ITC originally rejected this de.......
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Claim and continuation rules dead: thousands of practitioners breathe easier
October 14, 2009
Post by Blog Staff
In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations. This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued. The summary of the notice:The United States Patent and Trademark Office (Office) published a final rule in the Federal Register in August of 2007 to re.......
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Federal Circuit to consider whether a separate written description requirement exists in section 112
August 23, 2009
Post by Blog Staff
In an en banc order Friday, the Federal Circuit announced it will rehear Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. en banc to consider whether there is a written description requirement in § 112 separate and apart from the enablement requirement. Specifically, the questions presented are: Whether 35 U.S.C. § 112, paragraph 1, contains a written description requirement separate from an enable.......
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Federal Circuit to hear claim and continuation rule case en banc
July 06, 2009
Post by Blog Staff
In an order this afternoon, the Federal Circuit agreed to hear en banc Tafas v. Doll, the case challenging the USPTO's claim and continuation rules. Back in March, a panel of the court held, in a 2-1 decision, the limits on continuation applications were invalid, but the remainder of the rules were not invalid, at least for the reasons given by the district court.In the order, the court set forth the brief.......
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Bilski: No machine or transformation, no patentable method, at least for now
November 03, 2008
Post by Blog Staff
As we reported Thursday, the Federal Circuit has decided In re Bilski, an en banc decision regarding the scope of patentable subject matter. Specifically, the court addressed what is necessary for a method to fall within the scope of patentable subject matter under § 101.The court, after examining the relevant Supreme Court cases on the subject (such as Diehr, Benson, and Flook), the court adopted the &qu.......
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Bilski decided
October 30, 2008
Post by Blog Staff
The decision is available here. It adopts the "machine-or-transformation" test for patentable subject matter. As stated by the majority:The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article.Click below for some quote.......
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En banc Federal Circuit scraps point of novelty test for design patent infringement
September 22, 2008
Post by Blog Staff
In an en banc decision this morning, the Federal Circuit has unanimously held that the "point of novelty" test for design patent infringement should no longer be applied. As stated by the court:[W]e hold that the "point of novelty" test should no longer be used in the analysis of a claim of design patent infringement. Because we reject the "point of novelty" test, we also do not ado.......
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En banc Eleventh Circuit reaffirms digital compilation of magazine archives a privileged revision
July 09, 2008
Post by Blog Staff
In a decision last week, the Eleventh Circuit en banc addressed the application of New York Times v. Tasini in the context of a comprehensive CD archive encompassing all National Geographic magazines from 1888 to 1996, called the Complete National Geographic. In a previous decision, a panel of the Eleventh Circuit held the CNG was a privileged revision under 17 U.S.C. § 201(c), and as a result, the owners of.......
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Thursday at the Federal Circuit: In re Bilski oral arguments on scope of patentable subject matter
May 06, 2008
Post by Blog Staff
This Thursday, the Federal Circuit will hear oral arguments en banc in In re Bilski (No. 2007-1130), a case that will help define the scope of patentable subject matter. Numerous amicus briefs have been filed in the case, and perhaps most interestingly, two of the amici, Bank of America and Regulatory DataCorp, have been granted permission to participate in the oral arguments.More information about the case and.......
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Federal Circuit to consider overruling State Street en banc
February 15, 2008
Post by Blog Staff
The Federal Circuit has, on its own motion, decided to hear a case en banc regarding the scope of patentable subject matter under § 101. The case, In re Bilski (No. 2007-1130), was argued before a panel of the court on October 1, 2007, and deals with the patentability of methods that involve only mental steps. Most interestingly, however, is that in the court's decision to hear the case en banc, the c.......
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No en banc rehearing for case holding "signals" not patentable subject matter
February 11, 2008
Post by Blog Staff
In a precedential order today, the Federal Circuit denied a petition for rehearing en banc in In re Nuijten. In that case, a panel of the court held that claims drawn to a "signal" did not fall into any of the statutory categories of patentable subject matter and were thus unpatentable under § 101. Judge Linn dissented from that decision, applying the § 101 framework from Diamond v. Chakrab.......
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Federal Circuit grants rehearing en banc in design patent case
November 26, 2007
Post by Blog Staff
The Federal Circuit today granted a petition for rehearing en banc in a design patent case, Egyptian Goddess, Inc. v. Swisa, Inc. In that case, the court held that when a design patent's "point of novelty" is a combination of existing design elements, the point of novelty must be a "non-trivial" advance over the prior art. This essentially incorporated an obviousness-type inquiry into th.......
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En banc Federal Circuit scraps affirmative duty of care to avoid infringement
August 21, 2007
Post by Blog Staff
In a unanimous en banc decision issued late yesterday afternoon, the Federal Circuit granted a petition for mandamus requested by a party who was ordered by a district court to produce attorney-client privileged and work product protected material of its trial counsel, and to permit deposition of its trial counsel. The order was entered after the defendant disclosed it would rely upon an opinion of counsel as a.......
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Thursday at the Federal Circuit: en banc arguments on the duty of care and waiver of privilege
June 05, 2007
Post by Blog Staff
This Thursday, the Federal Circuit will sit en banc to hear oral argument in In re Seagate Technology LLC, a mandamus case regarding a district court's order to produce certain attorney-client privileged materials. (Update (6/7): the audio of the oral argument is now available online at this link.) Like in many patent cases, one of the defendants, Seagate, chose to obtain an opinion from counsel regarding .......
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Federal Circuit to decide scope of attorney-client privilege waiver en banc
January 26, 2007
Post by Blog Staff
The Federal Circuit this afternoon agreed to hear a case to determine the scope of the waiver of attorney-client privilege when advice of counsel is used to defend against a charge of willful infringement. The order in In re Seagate Technology, LLC, which can be found here, invites the parties to brief the following questions: (1) Should a party's assertion of the advice of counsel defense to willful infri.......
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Federal Circuit considers intent required for inducing infringement en banc
December 14, 2006
Post by Blog Staff
The Federal Circuit resolved a perceived conflict in its case law regarding the necessary level of intent required for a defendant to be found liable for inducing infringement of a patent. The court considered one subsection of DSU Medical Corp. v. JMS Co. en banc to resolve the conflict. The court held that to prove the intent necessary for liability for inducing infringement, there must be "evide.......
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Majority of Federal Circuit appears ready to reconsider claim construction standard of review
November 22, 2006
Post by Blog Staff
Today the Federal Circuit denied rehearing en banc in Amgen, Inc. v. Hoechst Marion Roussel, Inc., a case dealing with synthetic human erythropoietin, a protein that stimulates red blood cell production. In order to rehear a case en banc, a majority of active judges on the court must vote to rehear the case. There are twelve judges on the Federal Circuit, five of whom voted to rehear this case, thus rehearing wa.......
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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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