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Category: Federal Circuit cases


Resolving Circuit Splits: Supreme Court Addresses Issues Regarding Legal Fees
March 07, 2019
Post by Tina G. Yin Sowatzke, Pharm.D.
Tina G Yin-Sowatzke On March 4, 2019, the United States Supreme Court granted certiorari in Iancu v. NantKwest, Inc. to settle the debate over what “all the expenses” means under the U.S. Patent and Trademark Office’s (USPTO) win-or-lose attorney fee policy. This controversial policy involves seeking attorneys’ fees from applicants, regardless of the outcome of a case. During patent prosecution, if met wi.......
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Athena Diagnostics v. Mayo Collaborative Services Part 2, or: For the Benefit of Us All
February 15, 2019
Post by Oliver P. Couture, Ph.D.
Part 1 of the review of Athena Diagnostics v. Mayo Collaborative reviewed how the Majority Opinion is at odds with precedent and the most recent United States Patent & Trademark Office (USPTO) Subject Matter Guidelines published last month. Part II below examines the dissent from Judge Newman and how it aligns with both precedent and the Guidelines. As stated in Part 1, at issue in Athena was an admi.......
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Athena Diagnostics v. Mayo Collaborative Services Part 1, or: How I Learned to Stop Worrying and Love the Inconsistencies
February 12, 2019
Post by Oliver P. Couture, Ph.D.
Part 1 of the review of Athena Diagnostics v. Mayo Collaborative will look at how the Majority Opinion is at odds with precedent and the most recent United States Patent & Trademark Office (USPTO) Subject Matter Guidelines published last month. Part 2 will look at the dissent from Judge Newman and how it fits better with both precedent and the Guidelines. At issue in Athena, were methods for detectin.......
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Jury Orders Mongols Motorcycle Club to Forfeit Trademark
January 24, 2019
Post by Brandon W. Clark
The Mongols Nation motorcycle club was recently convicted of violations of the Racketeer Influenced and Corrupt Organization Act (RICO) resulting in a California federal jury ordering the motorcycle club to forfeit its trademarked logo based on links between the image and the criminal activities carried out by the group. The imagine incorporates the motorcycle club’s name along with a Genghis Khan-type c.......
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An IPR Appellant Must Establish an Injury to Have Standing
August 10, 2018
Post by Blog Staff
In JTEKT Corp. v. GKN Auto. Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018), the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an inter partes review (IPR) appeal due to lack of standing. The requirement for an appellant to establish an injury in fact remains firm. JTEKT petitioned for an IPR on a patent owned by GKN. The Patent Trial and Appeal Board (PTAB) instituted the revie.......
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Federal Judge Rules Embedded Tweet Violated Copyright
February 21, 2018
Post by Brandon W. Clark
In a surprising ruling, U.S. District Court Judge Katherine B. Forrest, recently ruled that several news organizations and publishers violated a photographer’s copyright when they “embedded” a photo from Twitter on their websites without permission. Judge Forrest’s decision to grant the plaintiff’s motion for partial Summary Judgement is sure to be controversial and could prove to be very significant, po.......
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Federal Circuit Emphasizes “Why” is Important Part of Obviousness Rationales in Chemical Patent Cases
September 21, 2017
Post by Jonathan L. Kennedy
In a recent decision by the Federal Circuit Court of Appeals, In re Stepan Company, the Federal Circuit reversed the Patent Trial and Appeal Board decision to affirm an examiner’s rejection that claims were obvious.  The claims in the application were directed to ultra-high load, aqueous glyphosate salt-containing concentrates comprising water, a glyphosate salt in an aqueous solution, a surfact.......
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What's In A Name?
August 02, 2017
Post by Blog Staff
Theresa Earnhardt, widow to professional race car driver Dale Earnhardt and step-mother to Kerry Earnhardt, appealed the Trademark Trial and Appeal Board’s decision that her stepson’s mark, EARNHARDT COLLECTION, was notas a whole primarily a surname. Theresa Earnhardt is the owner of trademark registrations and common law rights in the use of the mark DALE EARNHARDT. Kerry Earnhardt, as CEO of Kerry Earn.......
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When Life Hands you Lemons, Make CoQ10
July 27, 2017
Post by Blog Staff
In the Federal Circuit Decision of Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc., the Court found three related Soft-Gel patents invalid for obviousness. The three patents describe a way to dissolve CoQ10 in monoterpenes for enhanced delivery to the body. The patents disclosed two suitable examples, limonene and carvone and derivatives thereof. However, prior to suit, the Patent Trial and Appeal B.......
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Inevitable Does Not Equal Obvious
July 21, 2017
Post by Blog Staff
Earlier this week, the Unites States Court of Appeals for the Federal Circuit (“CAFC”) held that the United States District Court for the District of Delaware clearly erred in its obviousness analysis in Millennium Pharmaceuticals, Inc. v. Sandoz, Inc, reversing the lower court’s decision and entering judgment in favor of Millennium. Millennium Pharmaceuticals, Inc. (“Millennium”) sued the defendants und.......
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Court of Appeals Gets Specific with Enablement
July 11, 2017
Post by Blog Staff
In Storer v. Clark, the Court of Appeals explored whether a provisional application had sufficiently enabled interference subject matter.  In order to prove enablement it must be shown that “one skilled in the art, having read the specification, could practice the invention without ‘undue experimentation.’” ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010). Undue experimentation is.......
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Trademark Description: Does job placement software render the service of professional placement and recruitment?
December 22, 2016
Post by Blog Staff
In 2004 JobDiva registered the service mark JOBDIVA (U.S. Registration 2,851,917, hereinafter ‚¬Ëœ917) for "personnel placement and recruitment"services. In 2005, JobDiva registered the service mark JOBDIVA (plus design) (U.S. Registration 3,013,235, hereinafter ‚¬Ëœ235) for "personnel placement and recruitment services; computer services, namely, providing databases featuring recrui.......
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Software patents in the Federal Circuit‚¬¦ One step forward, two steps back.
October 12, 2016
Post by Blog Staff
Following the United States Supreme Court's ruling in the Alice Corp. v. CLS Bank Int'l, (S. Ct. 2014) case (which held that abstract ideas are not patentable), the software and computer industry has been fighting and clawing to peel back the layers of the decision in hopes of finding some clarity as to what is and is not patentable subject matter. In Alice, the Supreme Court held th.......
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Federal Circuit Upholds 180-Day Notice Period for Biosimilars
July 06, 2016
Post by Blog Staff
On Tuesday, the Federal Circuit sustained an injunction preventing generic drug maker Apotex, Inc. from selling a similar version of Amgen Inc's Neulasta drug without a 180 day notice period after being approved by the FDA. The drug is used to boost white blood cell counts in cancer patients and is made using living cells. Because of the nature of biologic drugs such as Neulasta, it .......
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Federal Circuit Finds Patent Eligibility for Application of Natural Law
July 05, 2016
Post by Blog Staff
. . -- Please select --  The Federal Circuit has handed down its decision in Rapid Litigation Management v. CellzDirect.  The technology at issue in the case is a method of freezing-and-thawing a group of hepatocytes and then selecting those that are still viable.  The patent-owner sued the defendant for infringement of the patent, and the defendant in turn filed a motion f.......
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Supreme Court Upholds Broadest Reasonable Interpretation and No Review for Institution in PTAB Proceedings
June 20, 2016
Post by Blog Staff
. The Supreme Court has issued its opinion in the case of In re Cuozzo Speed Technologies, LLC. In re Cuozzo initially began as an inter partes review (IPR) with the Patent Trial and Appeals Board (PTAB) where Garmin challenged the validity of Cuozzo's patent relating to an interface that uses GPS technology to display a vehicle's speed as well as the speed limit on the basis that Cuozzo's patent was.......
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Under Pressure: The State of Sampling in the Music Industry
June 20, 2016
Post by Blog Staff
Earlier this month, Madonna won the appeal of a copyright infringement lawsuit before the 9th Circuit Court of Appeals. The plaintiff, VMG Salsoul LTD., alleged that a tiny (0.23 second!) sample of the horns from the song "Love Break"was used in Madonna's song "Vogue.‚¬ The majority held that the sample was too small to be considered infringement. Circuit Judge Susan Grab.......
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Supreme Court Issues Decision on Treble Damages
June 13, 2016
Post by Blog Staff
On the subject of willful infringement, 35 U.S.C. § 284 provides that, "[T]he court may increase the damages up to three times the amount found or assessed.‚¬ On its face, the statute allows for broad discretion by the district courts, but the Federal Circuit set out a stricter standard for awarding of enhanced damages, as In re Seagate Technology LLC. This test required clear and c.......
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Federal Circuit Reverses PTAB Obviousness Decision for the Board's Failure to Adequately Articulate an Obviousness Rationale
May 25, 2016
Post by Jonathan L. Kennedy
In Black & Decker, Inc. v. Positec USA, Inc., a non-precedential opinion, the Federal Circuit reversed the Patent and Trial Appeal Board's (PTAB) finding of obviousness of two claims.  The appeal arose from an Inter Partes Review (IPR) of U.S. Patent No. 5,544,417 owned by Black & Decker directed to a string trimmer.  The PTAB had instituted the IPR on two appara.......
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Supreme Court Revisits Standard for Awarding Attorneys' Fees in Copyright Cases
April 28, 2016
Post by Brandon W. Clark
Brandon W. Clark Earlier this week the Supreme Court heard oral arguments addressing the relevant standard for awarding attorneys' fees in cases involving copyright law. The Court's ruling, expected later this spring, will likely have a significant impact on copyright litigation cases. Section 505 of the Copyright Act provides that a district court "may"award a reasonable attorney's fee to a "prevai.......
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PTAB's Interpretation of 35 USC 315(b) Continues to Stand: Dismissal Without Prejudice Effectively Nullifies the One Year Bar to Bring an IPR
March 30, 2016
Post by Jonathan L. Kennedy
The USPTO's Patent Trial and Appeal Board's holding that the voluntary dismissal of a lawsuit, without prejudice, effectively nullifies the service of the complaint for purposes of triggering the one year bar in 35 U.S.C. § 315(b) to petition for the institution of an inter partes review (IPR) stands in Shaw Indus. Grp. v. Automated Creel Sys. after the Federal Circuit maintains that it does not have juri.......
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Federal Circuit Recognizes Patent "Agent"Privilege
March 09, 2016
Post by Blog Staff
The attorney-client privilege has not previously been extended to cover communications between U.S. patent applicants and non-attorney patent agents. That is about to change. In a recent decision, In re: Queen's University at Kingston, the Federal Circuit recognized that communications between U.S. patent applicants and non-attorney patent agents should receive some degree of privilege. In recogniz.......
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Does Spotify Owe You Money? Streaming Service Sued for $150 Million in Unpaid Royalties
February 24, 2016
Post by Brandon W. Clark
Brandon W. Clark David Lowery, the frontman of Cracker and Camper Van Beethoven, has recently filed a class action lawsuit seeking at least $150 million dollars in damages against Spotify. Lowry alleges Spotify knowingly, willingly, and unlawfully reproduces and distributes copyrighted compositions without obtaining mechanical licenses. According to the complaint, which was fil.......
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Federal Circuit Clarifies Rules for IPR Supplemental Information Submission
January 07, 2016
Post by Blog Staff
The Am The America Invents Act (AIA) created a number of new pseudo-litigation proceedings at the Patent Trial and Appeal Board (PTAB) of the USPTO.  While the proceedings, including inter-partes review (IPR), have been in place since September 16, 2012, the specific rules and procedures, as well as the underlying authority, continue to be resolved.  .......
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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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Are electronic transmissions "articles"within 19 U.S.C. § 1337?
November 16, 2015
Post by Blog Staff
The United States International Trade Commission (USITC) is authorized by federal law (39 U.S.C. § 1337) to take action against the "importation … of articles that (i) infringe a valid and enforceable U.S. patent."USITC investigations represent an alternative to federal court intellectual property litigation, and may be especially useful where the allegedly infringing act invo.......
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Federal Circuit-Statements in Application Properly Used to Enable Prior Art
October 27, 2015
Post by Blog Staff
. One of the basic requirements for the grant of a patent by the USPTO is the invention must be shown to be "new."In practice, this means that the invention must be sufficiently different from the existing prior art, including patents, publications, and existing products. However, in order for a piece of prior art to preclude patentability, it must enable a person of ordinary skill in.......
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Supreme Court to Review Willful Infringement Standard in Light of Octane Fitness
October 21, 2015
Post by Blog Staff
Paul S. Mazzola In the 2014 case of Octane Fitness v. ICON Health & Fitness, the Supreme Court overruled Federal Circuit jurisprudence and provided a flexible framework for district courts to grant attorney's fees in "exceptional cases"under 35 U.S.C. § 285. The Court reasoned that requiring a prevailing party to show "material inappropriate conduct"or that a case was both "object.......
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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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Federal Circuit Weighs in on Abbreviated Biosimilar Applications
July 23, 2015
Post by Blog Staff
The Biologics Price Competition and Innovation Act (BPCIA) establishes an abbreviated pathway for regulatory approval of follow-on biological products that are highly similar to a previously approved product (the reference product).  The general structure of the abbreviated pathway, referred to as "biosimilar" licensure , is similar to that used for Abbreviated New Drug Applications (AND.......
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Octane Fitness in Practice: Federal Circuit Applies Supreme Court Attorney Fees Standard
July 14, 2015
Post by Blog Staff
The Supreme Court decision in Octane Fitness LLC v. ICON Health and Fitness (previously discussed on Filewrapper®) changed the standard for awarding attorney fees in patent suits to the prevailing party in exceptional cases under Section 258 of the patent statute. In Octane Fitness, the Court further defined "exceptional cases"to mean those "that stands out from ot.......
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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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Teva v. Sandoz Revisited
June 25, 2015
Post by Blog Staff
Teva v. Sandoz Revisited On June 18, 2015, a Federal Circuit panel reaffirmed that the key claim of the patent at issue inTeva v. Sandoz, was invalid as indefinite. The procedural posture and technical background leading up to this decision is discussed in aprior blog post.  The Federal Circuit ultimately concluded that they are still allowed to address if the question of .......
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"Intangible" Software Unpatentable? - AllVoice Developments v. Microsoft
May 28, 2015
Post by Blog Staff
  In this non-precedential opinion (Fed. Cir. 2015) the Court held claims 60-68 of U.S. Patent No. 5,799,273 (the "'273 Patent‚¬) invalid under 35. U.S.C. § 101 as not being directed to one of the four statutory categories of inventions identified in 35 U.S.C. 101. Claim 60 is set forth below: 60. A universal speech-recognition interface that enables opera.......
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Apple v. Samsung-Part II, A Design Patent Breakdown
May 21, 2015
Post by Luke T. Mohrhauser
  The United States Court of Appeals for the Federal Circuit recently decided the appeal for Apple v. Samsung, involving allegations of trade dress dilution, design patent infringement, and utility patent infringement. The case relates to Samsung's alleged copying of Apple's popular iPhone smartphone. A jury previously found that Samsung infringed Apple's design and utility patent.......
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Lost Profit Damages Require Actual Sales by Patentee
March 12, 2015
Post by Jonathan L. Kennedy
The award of damages in patent infringement cases is governed by 35 U.S.C. § 284. The statute provides "[u]pon finding for the [patent owner] the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court." The statu.......
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Cancelation of Trademarks due to First Actual Use After Application
March 04, 2015
Post by Blog Staff
Federal registration of a trademark provides a number of benefits to the trademark owner, including protection throughout the entire country, advantageous litigation position—for example presumption of validity and enhanced monetary damages—and enlistment of the U.S. Customs Service to stop importation of counterfeit goods. The federal trademark system provides two separate avenue.......
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Claim Preambles as Limitations- the Saga Continues
February 25, 2015
Post by Blog Staff
The preamble of a patent claim normally recites some purpose or objective, but is generally not considered to limit the scope of the claim unless it "breaths life and meaning into the claim." There are a number of ways that the preamble can take on patentable weight, including by serving as the antecedent basis for a limitation in the body of the claim. In Pacing Tech v. Garmin, the Fe.......
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Shifting Pre-Trial Strategy in the Wake of Alice and Ultramercial
December 04, 2014
Post by Blog Staff
Four recent Supreme Court cases involving patentable subject matter under 35 U.S.C. § 101 (Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, Inc., Ass'n for Molecular Pathology v. Myriad Genetics, Inc., and Alice Corp. v. CLS Bank International ) have had the practical effect of heightening the standard for patentability. However, these cases may also be altering the way patent c.......
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Federal Circuit Schedules Oral Hearing in First Appeal of Inter Partes Review
October 14, 2014
Post by Jonathan L. Kennedy
The Federal Circuit has scheduled oral arguments for the first appeal of an inter partes review ("IPR") decision by the Patent Trial and Appeal Board ("PTAB"). Oral arguments have beenscheduled for November 3, 2014. The appeal involves a number of interesting issues. First, it arises from the first IPR filed with the PTAB—Garmin USA, Inc. v. Cuozzo Speed Technologies, LLC (IPR2012-0000.......
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Legitimate Advocacy and Genuine Misrepresentation of Material Facts
August 25, 2014
Post by Blog Staff
The Federal Circuit has issued a decision inApotex Inc. v. UCB, Inc., upholding a district court's finding that Apotex's U.S. Patent No. 6,767,556 ("the '556 patent") is unenforceable due to inequitable conduct. Dr. Sherman, founder and chairman of Apotex, wrote the '556 patent application and is its sole inventor. The '556 is based on Canadian application filed on April 5, 2000........
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Critical Versus Optional, but Desireable Claim Elements
August 18, 2014
Post by Blog Staff
On August 6, 2014, the Federal Circuit Court of Appeals issued its opinion in ScriptPro, LLC v. Innovation Associates, Inc. In 2006, the Petitioner ScriptPro, LLC sued Innovation Associates, Inc. for infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601 ("the '601 patent"). The '601 patent describes a "collating unit" that uses sensors to automatically dispense and organiz.......
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Federal Circuit Invalidates Patent Claims As Non-Patentable Subject Matter
August 08, 2014
Post by Blog Staff
The U.S. Court of Appeals for the Federal Circuit's recent decision in Digitech Image Technologies v. Electronics for Imaging, Inc., upheld a decision that patent claims directed to a collection of numerical data that lacks a physical component or manifestation as well as an abstract idea of organizing data through mathematical correlations are invalid. The plaintiff, Digitech Image Technologies, filed in.......
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USPTO Patent Invalidation Precludes Judicial Equitable Remedies and Sanctions
July 31, 2014
Post by Blog Staff
The U.S. Court of Appeals for the Federal Circuit has issued a decision inePlus, Inc. v. Lawson. ePlus sued Lawson asserting infringement of two patents—U.S. Patent Nos. 6,023,683 ("the '683 patent") and 6,505,172 ("the '172 patent"). At trial, the district court held two of ePlus's asserted system claims and three of ePlus's asserted method claims not invalid, and the j.......
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Federal Circuit Weighs in on Stays for Post-Grant Review
July 24, 2014
Post by Blog Staff
The Federal Circuit has issued an opinion in VirtualAgility Inc. v. Salesforce.com, Inc., providing clarification regarding how court should properly determine whether to stay litigation during later-requested post-grant PTO proceedings. Under the America Invents Act, a district court is permitted, but not required, to grant such a stay. The statute also provides a list of four factors that the district court is.......
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PTO Interference Decisions do not Preclude Invalidity Defenses in Court
July 23, 2014
Post by Blog Staff
The Federal Circuit has issued a decision in AbbVie v. Janssen Biotech and Centocor Biologics, which relates to patents that broadly cover antibodies which can neutralize activity of human interleukin 12 (IL-12) and have useful application in the treatment of autoimmune disorders. The patent owner, AbbVie, sued Janssen and Centocor for infringement of the patents at issue. At trial, the jury found that all of the.......
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Federal Circuit Holds Common Sense Cannot Establish Presence of an Element
June 13, 2014
Post by Blog Staff
The Federal Circuit's recent decision in K/S HIMPP v. Hear-Wear Technologies presents an interesting development in the law of obviousness. In affirming a finding of non-obviousness by the PTO Board of Patent Appeals and Interferences ("BPAI"), the Federal Circuit held that while common sense or basic knowledge may provide a reason to combine elements present in the prior art, it cannot establish th.......
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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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Federal Circuit Finds Clones Unpatentable
May 12, 2014
Post by Blog Staff
The Federal Circuit issued its opinion in In re Roslin Institute, a case involving cloned animals. The Roslin Institute (Roslin) owns a patent for methods of cloning animals, based on the work that created Dolly the Sheep. The inventors of that patent also assigned to Roslin an application claiming protection for the clones themselves. During prosecution, the USPTO deemed the claims to the clones contained in t.......
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"Insolubly Ambiguous" Standard not Applicable at the USPTO
May 09, 2014
Post by Blog Staff
InIn re Packard the Federal Circuit held that the USPTO need not follow the insolubly ambiguous standard in order to satisfy a prima facie rejection for indefiniteness. Rather, the Federal Circuit held that when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the clai.......
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Competing Without Practicing - Preliminary Injunctions for Patent Infringement
April 24, 2014
Post by Blog Staff
InTrebo Manufacturing, Inc., v. Firefly Equipment, LLC, the Federal Circuit held that a plaintiff seeking a preliminary injunction for patent infringement does not need to practice the patent at issue in order to receive an injunction, so long as it sells a competing product. Trebro brought suit alleging that FireFly's sod harvester product infringed its U.S. Patent No. 8,336,638, and seeking a preliminary i.......
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StoneEagle v. Gillman - Patent Inventorship, Authorship, and Ownership
March 31, 2014
Post by Blog Staff
In StoneEagle Services, Inc.,v. Gillman the Federal Circuit confirmed that assistance in reducing aninvention to practice generally does not contribute to inventorship. In this case, the issue centered on whether there was a sufficient controversy regarding inventorship for the case to remain in federal court. The plaintiff alleged that the defendant had "falsely claimed that it is his patent, that he wrote .......
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Means-Plus-Function Claims and Written Description for Priority
February 10, 2014
Post by Blog Staff
InEnOcean GMBH v. Face International Corp., the Federal Circuit vacated and remanded a final order of the U.S. Patent and Trademark Office (“PTO”) and the Board of Patent Appeals and Interferences (“Board”) with respect to EnOcean’s U.S. Patent Application No. 10/304,121. The Federal Circuit held (1) the term “receiver” was recited with sufficient structure as to not inv.......
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Patent Invalidity Based on Non-Compliant Claims of Priority
February 03, 2014
Post by Blog Staff
InMedtronic Corevalve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed summary judgment of invalidity of the asserted claims of U.S. Patent No. 7,892,281 ("the '281 patent") based on the patent's claimed priority date. Medtronic sued Edwards for infringement of claims 3, 4, 7, 12, 14, and 15 of the '281 patent. The U.S. District Court of the Central District of California gr.......
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Federal Circuit Clarifies Patent Term Adjustment
January 23, 2014
Post by Blog Staff
The U.S. Court of Appeals for the Federal Circuit has issued an opinion that provides guidance for how Patent Term Adjustments should be calculated. Between June 2009 and May 2011, Novartis filed four civil lawsuits against the Director of the United States Patent and Trademark Office (PTO) in the United States District Court for the District of Columbia claiming that, for twenty-three of its issued patents, the D.......
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Exhausting Patent Rights Without a "Sale"
November 22, 2013
Post by Blog Staff
InLifeScan Scotland, LTD v. Shasta Technologies, LLC, the Federal Circuit clarified the ability of a patnet holder to enforce patent rights in a product it has given away, but not "sold." Defendant Shasta Technologies appealed from a decision of the United States District Court for the Northern District of California granting LifeScan Scotland a preliminary injunction. The injunction prohibits Shasta f.......
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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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Supplier's Agreement to Manufacture May Trigger On-Sale Bar
August 16, 2013
Post by Blog Staff
In an Opinion on August 14, 2013 (Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc.), the Federal Circuit ruled that the on-sale bar was triggered when a purchase order for slow cookers by patentee Hamilton Beach was confirmed by its supplier. The Court stated that Hamilton Beach’s transaction with its supplier was an offer for sale of a product that anticipated the asserted claims and that the inventio.......
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Federal Circuit Confirms Invalidity for Overbroad Written Description
July 23, 2013
Post by Blog Staff
Novozymes v. DuPont Nutrition Biosciences involved patent 7,713,723 directed toward recombinant Bacillus alpha-amylase enzymes engineered to have enhanced acid tolerance and heat tolerance. The patent owner, Plaintiffs-Appellants Novozymes, sued DuPont for infringement. DuPont defended on grounds of non-infringement and invalidity and countersued for a declaratory judgment that the '723 patent was invalid fo.......
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New and Useful - July 10, 2013
July 10, 2013
Post by Blog Staff
· InConvolve v. Compaq Computer the Federal Circuit affirmed in part the United States District Court for the Southern District of New York ruling that Compaq Computer Corp., Seagate Technology, LLC., and Seagate Technology, Inc. did not misappropriate 11 of 15 alleged trade secrets from Convolve, Inc. In addition, the Federal Circuit affirmed the district court’s judgment that 8 claims of U.......
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New and Useful - July 8, 2013
July 08, 2013
Post by Blog Staff
· The Federal Circuit inUltramercial, Inc. v. Hulu, LLC held that the district court erred in holding that the subject matter of U.S. Patent No. 7,346,545 ('545) is not a "process" within the language and meaning of 35 U.S.C. § 101. The Federal Circuit reversed and remanded this case stating the claims were not abstract and were patent eligible. The '545 patent claims a meth.......
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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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Intrinsic Evidence Can Provide Adequate Support to Overcome Indefiniteness
May 01, 2013
Post by Blog Staff
In Biosig Instruments, Inc. v. Nautilus, Inc., the Federal Circuit reversed a decision by the U.S. District Court for the Southern District of New York finding a patent invalid for indefiniteness, relying on intrinsic evidence. Biosig Instruments, Inc. (“Biosig”) is the assignee of U.S. Patent No. 5,337,753 (“the ’753 patent”). The ’753 patent is directed to a heart rate monit.......
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New and Useful - April 23, 2013
April 23, 2013
Post by Blog Staff
· InK-Tech Telecoms v. Time Warner Cable, the Federal Circuit confirmed that the standard for evaluating the adequacy of complaints alleging direct patent infringement remains Form 18 of the Appendix of Forms to the Federal Rules of Civil Procedure ("Form 18"). K-Tech filed separate complaints against Direct TV and Time Warner Cable (“TWC”) on the same day, alleging infringeme.......
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New and Useful - April 10, 2013
April 10, 2013
Post by Blog Staff
· InIn re Hubbell the Federal Circuit confirmed the rejection of all of the pending claims in an application, filed with Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall as named inventors. The invention disclosed in the application was based on research performed while all of the named inventors were at California Institute of Technology (CalTech). As a result, the application is assig.......
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Federal Circuit affirms importance of secondary indicia of non-obviousness
April 05, 2013
Post by Blog Staff
The Federal Circuit has recently decided the case ofPower Integrations, Inc. v. Fairchild Semiconductor International, Inc. Power Integrations, Inc. (Power) sued Fairchild Semiconductor International, Inc. (Fairchild) in the U.S. District Court for the District of Delaware, alleging infringement of Power’s four patents covering chargers for mobile phones. In a bifurcated trial, the claims of the patents .......
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New and Useful - April 5, 2013
April 05, 2013
Post by Blog Staff
· In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. the Federal Circuit clarified several points relating to claim construction, determinations of non-obviousness, and calculation of damages. The court confirmed that claiming a “circuit” in conjunction with a sufficiently definite structure for performing the identified function is adequate to bar means-plus-fu.......
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New and Useful - March 15, 2013
March 15, 2013
Post by Blog Staff
In Brilliant Instruments, Inc. v. GuideTech, LLC, the Federal Circuit reversed a district court’s order granting summary judgment of non-infringement of three related patents. The three asserted patents relate to circuits that measure the timing errors of digital signals in high-speed microprocessors. The inventor of the three patents left employment with the plaintiff, GuideTech, and founded the.......
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New and Useful - February 21, 2013
February 21, 2013
Post by Blog Staff
Normal 0 false false false EN-US X-NONE X-NONE Read More


Federal Circuit Addresses Subject Matter Jurisdiction in Patent-Related Cases
February 14, 2013
Post by Blog Staff
In Semiconductor Energy Lab. Co., Ltd. v. Yujiro Nagata, the Federal Circuit weighed in on federal subject matter jurisdiction and provided two important reminders: (1) Just because a cause of action originates from a patent, standards in the patent statute, or even from other patent litigation, it is the present cause of action and claims that dictate whether subject matter jurisdiction is proper; and (2) .......
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Accent Packaging, Inc. v. Leggett & Platt, Inc.: Reminders on Claim Construction, Discovery Matters
February 06, 2013
Post by Blog Staff
In Accent Packaging, Inc. v. Leggett & Platt, Inc., the Federal Circuit affirmed in part and reversed in part the district court’s grant of summary judgment of non-infringement. Accent is the assignee of U.S. Patents 7,373,877 (the '877 patent) and 7,412,992 (the '992 patent). The patents are drawn to a wire tier device useful for baling and handling recyclables and solid waste to facilitate be.......
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New and Useful - February 6, 2013
February 06, 2013
Post by Blog Staff
· In Allergan, Inc. v. Barr Labs the Federal Circuit affirmed a decision by the District of Delaware finding that Barr Laboratories, Inc. and Sandoz Inc. had infringed a patent owned by Allergen, Inc., and finding the patent-in-suit valid. Barr and Sandoz each filed abbreviated new drug applications (ANDA) for a generic version of the drug covered by the Allergen patent, and both ANDAs asserted tha.......
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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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New and Useful - January 23, 2013
January 23, 2013
Post by Blog Staff
· In Wax v. Amazon Techs., the Federal Circuit upheld the TTAB’s denial of registration of the mark AMAZON VENTURES. Applicant filed and intent-to-use application to register the mark for “investment management, raising venture capital for others, . . . and capital investment consultation.” Amazon Technologies, Inc.—online retailer and owner of several AMAZON.COM marks&mdas.......
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Federal Circuit Addresses Obviousness Rationales and Counterarguments
January 17, 2013
Post by Blog Staff
Recently, the Federal Circuit issued its opinion in CW Zumbiel v. Kappos. The Federal Circuit affirmed the Board of Patent Appeals and Interferences’ (“BPAI”) finding that multiple claims in U.S. Patent No. 6,715,639 (“the ’639 patent”) were obvious and therefore invalid. The ’639 patent is directed to a “carton with an improved dispenser.” The carton is for.......
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New and Useful - Janurary 14, 2013
January 14, 2013
Post by Blog Staff
· The Supreme Court handed down its decision in Already, LLC v. Nike, Inc. The Court held that Nike’s covenant not to sue Alreadyfor alleged infringement of Nike’s AIR FORCE 1 trademark—entered into after Nike had filed suit and Already had filed a counterclaim challenging the mark’s validity—rendered both Nike’s claims and Already’s counterclaims moot. Th.......
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Supreme Court Orders Federal Circuit to Reconsider Patent-Eligibility of Genes
March 30, 2012
Post by Blog Staff
Just six days after it handed down its decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Supreme Court vacated the Federal Circuit’s decision in Association for Molecular Pathology v. United States Patent and Trademark Office, ordering the appellate court to reconsider the case in light of the Prometheus decision. Order granting cert., vacating judgment, and remanding for further.......
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Federal Circuit Establishes New Standard for Inequitable Conduct
June 15, 2011
Post by Blog Staff
On May 25, 2011 the Federal Circuit released its en banc decision in Theresense, Inc. v. Becton, Dickinson & Co. , in which the Court articulated the appropriate standard for inequitable conduct before the PTO. The majority wrote, “[t]his court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.” .......
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Federal Circuit requires agency relationship or contractual obligation for joint infringement
January 04, 2011
Post by Blog Staff
To establish infringement of a method claim, a patent holder must show that all of the recited steps in the claim are performed by a defendant. If the recited steps are not performed by a single entity, but by the defendant acting in concert with another party, the patent holder may still show “joint infringement” if the defendant controls or directs the activities of another party.In Akamai Technolog.......
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Federal Circuit determines that method for optimizing dosing of medication is patent eligible
December 21, 2010
Post by Blog Staff
The Federal Circuit on Friday looked at the issue of what constitutes an attempt to patent a natural phenomenon. In Prometheus Laboratories, Inc. v. Mayo Collaborative Services, the Federal Circuit determined that a method for optimizing the dosage of a medication was not directed to a natural phenomenon and therefore was patent-eligible subject matter within the meaning of § 101 of the Patent Act. This is .......
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Inventor's prior art patents and prosecution history lead to reversal of claim construction
October 26, 2010
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of noninfringement and invalidity based on inadequate written description. The issue of infringement was reversed based on the district court's incorrect construction of a critical claim limitation. While the court held it was a "close case," it held the patentee had not acted as his own lexicograph.......
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Compliance with industry standards can be used to show patent infringement
September 27, 2010
Post by Blog Staff
In Fujitsu et al v. Netgear, the Federal Circuit held compliance with an industry standard can be sufficient evidence to establish patent infringement. However, this rule only applies when the only way to adhere to the industry standard is to infringe the asserted patent, such that any product that complies with the standard infringes. In this case, the court determined that a party could comply with the standar.......
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Federal Circuit decisions address false marking statute in Solo Cup and Brooks Brothers cases
September 27, 2010
Post by Blog Staff
The Federal Circuit continues to address false marking cases. The court's recent decisions stress how important it is for patentees to monitor and update their labeling and other marking activities, particularly as patents expire.In June, the court affirmed a summary judgment decision in favor of Solo Cup related to the company's practice of marking patents on beverage cup lids, and addressed whether each.......
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Preamble held not limiting because body of claim sets forth complete invention
September 20, 2010
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a decision of the United States District Court for the District of Massachusetts. The district court had granted summary judgment of noninfringement to the defendant finding that the defendant's accused device did not perform a function found only in the preambles of the asserted claims.The Federal Circuit held that the disputed preamble term did not limit th.......
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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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False marking applies on a per article basis, not a per decision to mark basis
March 03, 2010
Post by Blog Staff
In Forest Group v. Bon Tool Co., the Federal Circuit held that the false marking statute applies on a per article basis, rather than on a per decision to mark basis. The Federal Circuit reversed the district court, which had imposed a fine of $500 for a single decision to falsely mark a shipment of stilts as patented when they were not patented, and instructed the district court to recalculate the fine based on.......
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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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Developments up to second-filed application relevant to show no double patenting
February 17, 2010
Post by Blog Staff
The Federal Circuit has clarified the relevant timeframe for purposes of determining whether two claimed inventions are patentably distinct or would result in impermissible double patenting. The court held "the relevant time frame for determining whether a product and process are 'patentably distinct' should be at the filing date of the secondary application."Here, the product application was f.......
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If there are no sources of proof in the Eastern District of Texas, expect to be transferred
December 15, 2009
Post by Blog Staff
After the Fifth Circuit's Volkswagen and the Federal Circuit's TS Tech decisions, potential patent plaintiffs should be getting the message: Don't file in the Eastern District of Texas unless there are actually some sources of proof there. The Federal Circuit has again granted mandamus ordering the district court to transfer another case out of the district.In this case, there were no witnesses wi.......
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Are patent holding companies subject to different DJ jurisdiction standards than others?
December 14, 2009
Post by Blog Staff
According to the Federal Circuit, the answer to this question appears to be "yes." The court reversed a district court's dismissal of a declaratory judgment action against a patent holding company (or non-practicing entity (NPE), sometimes pejoratively referred to as a patent troll). The DJ action was predicated on three letters, the first from the NPE to the DJ plaintiff, the second in reply, and .......
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Common sense held sufficient to invalidate claims as obvious on summary judgment
December 14, 2009
Post by Blog Staff
If anyone needed further proof that patents are more easily held obvious after KSR, look no further. The Federal Circuit held that a patent directed to a method of email marketing with improved efficiency was obvious based on the "common sense" of one in the art. The claimed method had four steps, the fourth of which was (as described by the court) repeating the first three steps until a minimum thres.......
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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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Attendance at single trade show to display infringing product sufficient for personal jurisdiciton
October 20, 2009
Post by Blog Staff
In a case of first impression for the Federal Circuit, the court addressed the issue of how to apply Federal Rule 4(k)(2) (the Federal Court's long-arm statute) to a defendant. The court, in agreement with several other circuits, that a Rule 4(k)(2) analysis is appropriate when (1) the plaintiff's claim arises under federal law, (2) the defendant is not amenable to jurisdiction in any individual state, an.......
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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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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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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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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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Three disputed claim terms, three revised constructions, one remand
June 23, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit vacated and remanded a district court's judgment of noninfringement based on the parties' stipulation after claim construction. The district court construed three claim terms in a way that the parties agreed rendered all accused products noninfringing, and the plaintiff appealed.On appeal, the Federal Circuit reversed the district court's claim construction o.......
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When analyzing written description in interference, claims construed according to patent copied from
June 16, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment in a § 146action brought after an interference proceeding at the USPTO. The district court agreed with the Board's decision to award priority to the senior party in the interference, granting the senior party's motion for summary judgment that its specification satisfied the written description requirement.......
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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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In license agreement, right to "have made" implicitly granted with right to make
June 15, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's dismissal of a patent licensor's claims for breach of a license agreement and patent infringement. The non-exclusive licensee arranged to have third parties manufacture the licensed product, but the product was sold by the licensee. The patent owner argued this was a breach of the license because the license stated the only rights gran.......
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Patentee's commercial sales not relevant for personal jurisdiction in DJ action
May 20, 2009
Post by Blog Staff
In a decision addressing personal jurisdiction in declaratory judgment actions, the Federal Circuit affirmed a district court's dismissal of an action against a foreign patent owner. The plaintiff sought a declaration that two patents owned by a Taiwanese company were invalid and not infringed in the plaintiff's home forum, the Northern District of Alabama. The patentee sells products covered by the pate.......
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Insufficient enforcement activity in district by patentee leads to dismissal of DJ action
May 20, 2009
Post by Blog Staff
In a decision Monday, the Federal Circuit affirmed a district court's dismissal of a declaratory judgment action against a British patentee for lack of personal jurisdiction. The facts of the case are similar to the Avocent case decided a few months ago. Here, the patentee's only contacts with the district in which the action was brought were the sending of a cease and desist letter and non-exclusively .......
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When compounds in a class have divergent properties, positional isomer not obvious
May 18, 2009
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed a district court's determination that the asserted claims in a pharmaceutical patent were not proven obvious. As is common in pharmaceutical cases, the defendant filed an ANDA asserting the patent covering the compound and its use was invalid, and in the ensuing infringement suit admitted its proposed generic drug met the claim limitations. The district.......
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Marketing methods not patentable subject matter: no machine or transformation
April 21, 2009
Post by Blog Staff
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 directed to patentable subject matter because they.......
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Use of court-appointed expert not abuse of discretion, even when jury told of neutrality
April 16, 2009
Post by Blog Staff
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 a jury is going to understand [the technical details], to me, is foolishne.......
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Estoppel applies to all added limitations in claims, including when present in unamended claims
April 15, 2009
Post by Blog Staff
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 only two of the limitations were addressed .......
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Disclosure of compounds without link to claimed method fails to meet written description requirement
April 14, 2009
Post by Blog Staff
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 substantial evidence for its verdict. Specifica.......
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Sales of products by party under unconditional covenant not to sue exhaust patent rights
April 13, 2009
Post by Blog Staff
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 settlement agreement granting the third party a covenant not to .......
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Nondisclosure of test results disclosed to testifying expert results in sanctions, but not dismissal
April 09, 2009
Post by Blog Staff
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 test results were disclos.......
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Board's determination of priority, while "very close call," supported by substantial evidence
April 08, 2009
Post by Blog Staff
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 key limitation of the interference count. The Feder.......
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Kubin decided: Federal Circuit provides guidance for application of KSR in biotechnology
April 03, 2009
Post by Blog Staff
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 facts in the case. The Federal Circuit affirmed the Board's fi.......
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Public use can't be experimental if not for purposes of the patent application
April 02, 2009
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity of a patent and summary judgment to the defendant on the Plaintiff's false advertising claims. The defendant asserted the patent was invalid as obvious and by virtue of a prior public use. The district court held a genuine issue of fact existed regarding whether the public use was experimental,.......
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Today's Federal Circuit practice tip: don't misrepresent the record or the law
March 31, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit awarded sanctions against the plaintiff-appellant for filing and pursuing a frivolous appeal against one of four defendant-appellees. The court observed the plaintiff-appellant failed to explain how the district court erred in its determination that this defendant did not infringe and also made misrepresentations of the record and law in its briefing on appeal.In a separ.......
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Summary judgment of validity reversed; predictable variation of prior art obvious as a matter of law
March 30, 2009
Post by Blog Staff
In a decision last month, the Federal Circuit reversed a district court's summary judgment to the plaintiff. The district court had awarded damages after granting summary judgment of "validity" and infringement. While the Federal Circuit agreed with the district court's construction of a disputed claim term, the court held the asserted claims were obvious as a matter of law. Specifically, it w.......
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Combining two embodiments in same prior art patent "does not require a leap of inventiveness"
March 30, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law of obviousness. A jury held the claim at issue was not obvious, and the district court denied the defendant's post-verdict motion for judgment as a matter of law on the issue.While the Federal Circuit affirmed the district court's construction of two disputed claim terms, according to the Feder.......
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Ninth Circuit: Sufficient evidence of fraud to defeat summary judgment on Walker Process claim
March 27, 2009
Post by Blog Staff
In a recent decision, the Ninth Circuit addressed the antitrust implications of so-called "reverse payments" between brand name and generic pharmaceutical companies. A health care provider brought suit against the two companies, alleging their agreement to delay the introduction of a generic pharmaceutical (which involved payment to the generic manufacturer of $4.5 million per month) was a violation of.......
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Federal Circuit grants mandamus ordering transfer of case from Eastern District of Texas
March 25, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit granted a petition for a writ of mandamus after a district court denied transfer of the case. The defendants/petitioners had been denied transfer of a patent case from the Eastern District of Texas (a venue perceived to be plaintiff-friendly in patent cases) to the Southern District of Ohio, where two of the three defendants were located. The district court gave essenti.......
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Integrating infringing component into larger product does not escape contributory infringement
March 24, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's grant of summary judgment of obviousness, but vacated and remanded the summary judgment of no contributory or inducing infringement of two other patents in suit related to recordable optical disk drive technology. The court relied on copyright cases applying the concept of secondary liability in determining that the district court applied .......
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Patent lawyer without expertise in relevant field cannot testify on infringement, invalidity
March 24, 2009
Post by Blog Staff
The Federal Circuit recently reversed a district court's post-verdict grant of judgment as a matter of law of nonobviousness, applying the KSR obviousness standard and addressing the requirements for expert testimony for legal conclusions of obviousness. The Federal Circuit clearly set forth that patent attorneys without specific skill and training in the area of the technology involved in the patent-in-suit .......
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Failure to disclose patents to SSO results in unenforceabilty against products using standard
March 23, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed-in-part a district court decision that a patentee had breached a duty to disclose relevant video-compression technology patents while participating in a joint video team standards-setting organization (SSO). The Federal Circuit, however, reversed in part the district court decision finding the patents unenforceable against the world, instead holding the patents .......
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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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Continuation rules appeal decided; continuation limit invalid; RCE limit and ESD requirements valid
March 20, 2009
Post by Blog Staff
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 court holds the limit on continuation applications conflicts with 35 U.S.C.......
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Reliance on initial expert for rebuttal sufficient to defeat summary judgment
March 20, 2009
Post by Blog Staff
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 a genuine issue of fact regarding infringement unde.......
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Explanation of prior art element in dependent claim insufficient to confer inventor status
March 09, 2009
Post by Blog Staff
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 not have standing to sue. The Federal Circuit reversed, holding the allegedly.......
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Claim that infringing product was defendant's "innovation" cannot support section 43(a) claim
March 06, 2009
Post by Blog Staff
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 their basketball was their "innovation."The Federal Circuit reversed the dist.......
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Failure to raise KSR post-trial but pre-judgment results in waiver
March 05, 2009
Post by Blog Staff
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, 2006. Post-trial motions were fully briefed on February 20, 2007, and .......
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Covenant to sue that does not cover future infringement insufficient to defeat DJ jurisdiction
March 03, 2009
Post by Blog Staff
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 a covenant not to sue f.......
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United States did not waive immunity for copyright infringement claim brought by prisoner
February 05, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit held the Court of Federal Claims correctly dismissed a copyright infringement suit against the United States for lack of subject matter jurisdiction. The plaintiff is a federal prisoner who created various coyprightable works while in federal prison. He brought suit alleging copyright infringement after his works were distributed by Federal Prison Industries.The Court .......
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Scope of prior art teachings incorrect; summary judgment of obviousness reversed
February 05, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a district court's summary judgment of obviousness. The patent related to dessicant packages. The district court held a prior art reference taught all limitations of the claims with the exception of the type of absorbent material contained in the package, and that, under KSR, it would be obvious to one of ordinary skill in the art to substitute one material.......
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Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?
January 11, 2009
Post by Blog Staff
Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious. This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so how the Federal Circuit comes out on the issue has the potential to greatly affe.......
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Grant of stay while preliminary injunction motion pending abuse of discretion
January 05, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit found that a district court's grant of a stay pending inter partes reexamination without considering the patentee's pending motion for a preliminary injunction was an abuse of discretion. The Federal Circuit held the grant of the stay effectively denied the preliminary injunction motion, thereby making the stay order appealable. The court then held the district c.......
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Existence of other licenses under patent does not preclude finding of irreparable harm
January 05, 2009
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed a district court's grant of a permanent injunction. The district had previously granted a permanent injunction after a jury found willful infringement. In a previous appeal, the Federal Circuit affirmed the finding of willful infringement, but vacated the permanent injunction because the district court did not consider the four-factor test mandated by the S.......
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On appeal, BPAI cannot group claims that do not share a common reason for rejection
January 02, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a distirct court's vacatur of a decision of the Board of Patent Appeals and Interferences. In an appeal of rejections in twelve different applications involving approximately 2,400 claims, the Board only addressed the rejection of 21 "represntative" claims pursuant to 37 C.F.R. § 1.192(c)(7) [now 37 C.F.R. § 41.37(c)(vii)]. The Board too.......
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Use of "mechanism" in claim without more may result in means-plus-function interpretation
December 18, 2008
Post by Blog Staff
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 a means-plus-function claim. T.......
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Today's prosecution practice tip: don't use the phrase "the present invention" in the specification
December 18, 2008
Post by Blog Staff
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 history in the claim construct.......
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District court's order dismissing the action with prejudice held to be nonfinal due to counterclaims
December 17, 2008
Post by Blog Staff
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 denying the requested preliminary injunction and granting the .......
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Federal Circuit invalidates Patent on Nobel-Prize winning invention after 50 years of prosecution
December 16, 2008
Post by Blog Staff
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 discuss two different cases........
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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 clarifies burdens of proof when priority to earlier application is contested
November 11, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's determination that the asserted claims of a patent were not entitled to the effective filing date of the earliest application in a chain of four applications, and that as a result the claims were anticipated by intervening prior art. The court explained its recent decision in PowerOasis, where the court seemed to put the burden of proof on.......
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Federal Circuit declines to consider constitutionality of BPAI judge appointments, affirms rejection
November 06, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit decided a case involving both obviousness and the Appointments Clause relating to allegedly unconstitutional appointment of members of the Board of Patent Appeals and Interferences. The court determined that appellants failed to timely raise the issue of the constitutionality of the Appointments Clause by not presenting it to the Board, and therefore waived the issue.......
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Disclosure of single antibody insufficient to describe genus of related antibodies
November 06, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences sustaining in part the examiner's final rejection of the broadest claim in an application, directed to methods of treating neurofibrosarcoma using monoclonal antibodies. The Board reversed the examiner's rejection of the claim for lack of enablement, but sustained the rejection for lack of ad.......
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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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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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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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If no anticompetitive effect outside exclusionary zone of patent, reverse payment OK in ANDA cases
October 29, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit upheld the district court's grant of summary judgment in an antitrust case. At issue was whether reverse payments (from the patentee to the accused infringer) in the context of the Hatch-Waxman Act violated antitrust laws. The Federal Circuit observed that "[t]he essence of the inquiry is whether the agreements restrict competition beyond the exclusionary zone.......
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Remittitur without new trial requires legal error, not error as a matter of law
October 29, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a district court's reduction of the jury's damages award, remanding the case for a new trial on damages, and affirmed the jury's verdict of willful infringement and the district court's award of attorney fees under § 285. The district court held there was insufficient evidence as a matter of law to support the jury's damages award, so it .......
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Jury's pre-KSR nonobviousness verdict reversed post-KSR
October 29, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's grant of a judgment as a matter of law that the asserted claims of a patent were obvious after a jury verdict of no obviousness. KSR was decided after the jury's verdict but before the district court ruled on the defendant's motion for judgment as a matter of law.On appeal, the patentee argued the reference that allegedly rendered.......
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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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High materiality without explanation for nondisclosure leads to inference of intent to deceive
October 17, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's finding of inequitable conduct for one patent but reversed on a second, affirmed a finding of no invalidity of the second patent, but vacated the finding of infringement after modifying the district court's claim construction of a claim term. The court also reversed the finding of indefiniteness of a third patent.The court continued it.......
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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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Inducement not shown when accused product can work in an infringing way but doesn't have to
October 07, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed the International Trade Commission's finding of noninfringement with respect to one patent but reversed and remanded on another. At issue was whether the defendant had imported chipsets that infringed five of the plaintiff's patents in violation of 19 U.S.C. § 1337. The action was dismissed with regard to two of the patents, as any action related .......
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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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Advice of counsel evidence still relevant to intent to induce infringement
October 06, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a jury's finding of infringement of two patents and the related injunction, but reversed the district court's claim construction and the concomitant finding of infringement regarding a third patent. The court affirmed the district court's injunction despite the fact that the patentee licensed, rather than manufactured, the claimed inventions. The in.......
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Expert's internally inconsistent testimony could not support jury's infringement verdict
October 06, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit reversed a district court's denial of judgment as a matter of law after a jury returned a verdict of infringement. The Federal Circuit held the jury's verdict was not supported by substantial evidence, and that the plaintiffs' expert's opinions contradicted his factual testimony, and was thus incapable of supporting the jury's verdict of infringeme.......
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Inventor testimony regarding intent during patent prosecution irrelevant to claim construction
September 29, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit vacated a stipulated judgment of noninfringement on claim construction grounds. The construction issue dealt with the significance of a limitation that applied to an "at least one" element. Specifically, the relevant claim required "at least one condylar element," where "the condylar element" had certain features. The district court held th.......
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Federal Circuit affirms district court's decision setting aside $1.5 billion infringement verdict
September 26, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's grant of judgment as a matter of law based on lack of standing for one patent and non-infringement of a second patent. A jury awarded $1,538,056,702 in damages for infringement, but, as a result of the JMOL, the district court set aside the damages award. The Federal Circuit affirmed. The court agreed with the district court that the ju.......
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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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Patent exhaustion does not create a cuse of action; dismissal affirmed
September 24, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's decision dismissing a case for lack of subject matter jurisdiction. The plaintiff brought suit when it believed the patent holder had fraudulently concealed a second licensee of the same patents. The plaintiff was a licensee of the defendant patent holder and therefore could not seek a declaration of noninfringement, so instead brought.......
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Assertions of infringment at trade show sufficient to confer personal jurisdiction in DJ action
September 24, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a district court's order dismissing a case for lack of personal jurisdiction. The plaintiff brought a declaratory judgment action against the defendant patent holder in Washington. After sending a letter accusing the plaintiff of infringing two patents, the patent holder attempted to get the plaintiff's display removed from a trade show in Seattle and t.......
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Improper revival cannot be raised as grounds for invalidity in an infringement action
September 23, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit reversed a district court's summary judgment of invalidity. The district court held that the application that led to the patent-in-suit was abandoned, and the USPTO improperly revived it, rendering the patent invalid. The applicant missed the 30-month PCT national phase deadline by one day, but successfully petitioned to have the application revived for unintent.......
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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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Disclosure of gene from one bacterial source cannot support claims to gene from any bacterial source
September 22, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's grant of summary judgment of non-infringement and invalidity of various claims of three patents. The district court held no genuine issue of fact existed regarding noninfringement or invalidity under the written description requirement. The patents related to DNA polymerases, and the claims at issue covered plasmids containing the gene co.......
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Prior court decision of no invalidity based on prior art reference doesn't bar reexamination
September 17, 2008
Post by Blog Staff
The Federal Circuit recently construed the scope of the revised reexamination statute, 35 U.S.C. § 303, specifically what is required for a "substantial new question of patentability." In this case, the relevant reference was cited during the initial examination of the application that led to the patent under reexamination, but as a supporting reference. The reference was also the subject of inva.......
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Demonstration of product at trade show didn't meet all claim limitations; no personal jurisdiction
September 17, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed the dismissal of a patent infringement claim for lack of personal jurisdiction. The alleged infringer showed the allegedly infringing product at a trade show in DC, which led the plaintiff to file suit there. The district court dismissed, holding the defendant had not actually committed an infringing act at the trade show, and thus had not subjected itself to ju.......
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Patent claims not at issue at trial can't be found invalid, even if mentioned in complaint
September 15, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit reversed much of a district court's finding of willful infringement of a plaintiff's patents, tortious interference with the plaintiff's business relationships, and invalidity of the defendant's patents. Regarding the willful infringement, the Federal Circuit determined that the district court had improperly interpreted the claims of the plaintiff's p.......
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Covenant not to sue removes jurisdiction despite lingering Hatch-Waxman exclusivity issues
September 15, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's decision involving declaratory judgment jurisdiction in the context of abbreviated new drug applications (ANDAs) and a related covenant-not-to-sue involving one patent at issue. The court affirmed a covenant-not-to-sue coupled with a stipulation of validity and enforceability removed any case or controversy required for declaratory judgme.......
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No evidence of intent to deceive, no inequitable conduct
September 10, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of inequitable conduct against the patentee. At issue was whether the patentee's failure to disclose a letter describing an aspect of the prior art constituted inequitable conduct. The court reversed finding that the alleged infringer had failed to provide sufficient facts to support an inference of intent to.......
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Clinical trials necessary to determine invention works for intended purpose
August 27, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's ruling in favor of AstraZeneca, holding that the generic drug manufacturers Apotex and Impax Laboratories infringed patents for the popular heartburn medication Prilosec® (generic form omeprazole) in filing abbreviated new drug applications (ANDAs). The Federal Circuit previously addressed these patents in the context of other defe.......
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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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Federal Circuit affirms USPTO's interpretation of inter partes reexamination statute
August 22, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed a district court's holding that the USPTO's interpretation of the inter partes reexamination procedure was correct, and therefore that all patent applications (other than reissue applications) filed after November 29, 1999 are eligible for inter partes reexamination, even if priority is claimed to an application filed before that date. While the distric.......
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No case or controversy when patentee doesn't even know of potentially infringing product
August 21, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit upheld a district court's decision that Article III jurisdiction did not exist in a case where a potential infringer was seeking a declaration of noninfringement. The district court granted a motion to dismiss the under the Federal Circuit's pre-MedImmune reasonable apprehension of suit test, noting that there was no reasonable apprehension of suit. In a foot.......
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Efforts to terminate infringement after notice of patent doesn't avoid damages
August 21, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit vacated a district court's grant of summary judgment of non-infringement of a patent on the basis of claim construction. Specifically, the district court had improperly imported limitations from nonasserted claims into the asserted claims, resulting in an unduly narrow claim construction. The court also vacated the district court's grant of summary judgment of .......
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Today's lesson for litigators: make sure you present all your arguments to the district court
August 21, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed a district court's holding that two patents were invalid under the on-sale bar of 35 U.S.C. § 102(b). The inventor filed a declaration during prosecution that the invention was reduced to practice before the critical date of the patents, and thereafter sold the claimed method, also before the critical date. The post-reduction to practice sales could n.......
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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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Federal Circuit: Breach of open source license conditions can lead to copyright infringement
August 16, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit addressed some of the copyright issues involved with the open source movement. Often open source software is distributed under a so-called copyleft license, which permits others to use the work, subject to certain restrictions. The GNU general public license is the most well-known of these licenses. The license at issue in this case was the Artistic License. The distri.......
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FDA research safe harbor does not extend to devices not subject to FDA approval
August 07, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed a district court's holding of patent infringement on the basis that the "safe harbor" provision of the Hatch-Waxman Act, § 271(e)(1), did not insulate the accused activity from infringement and that the district court did not err in granting a judgment as a matter of law in favor the plaintiff on infringement and the defendant's invalidity.......
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When exclusion order based on multiple patents, failure to appeal under each may render appeal moot
August 06, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed the United States International Trade Commission's finding of infringement and validity. The claims were brought under three patents that all claimed priority to a common parent application, and thus would ordinarily all expire on the same day. However, one of the three patents was subject to a 108 day term extension under 35 U.S.C. § 154(b). The f.......
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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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Federal Circuit addresses scope of immunity waiver for copyright and DMCA claims
July 27, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a decision from the United States Court of Federal Claims dismissing a copyright holder's claims for lack of jurisdiction on the ground that the Government had not waived sovereign immunity. The suit arose from alleged copyright infringement and an alleged violation of the Digital Millennium Copyright Act of 1998 (DMCA). The Federal Circuit found that the CFC.......
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Arguments made distinguishing prior art spell doom for broader claim construction
July 27, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's claim construction and related grant of summary judgment of non-infringement.The court affirmed the construction in part because the plaintiff's interpretation of the claim elements was at odds with the plaintiff's stance during the prosecution history. Specifically, the patentee added the element in question to overcome the pri.......
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Federal Circuit provides more post-KSR guidance for obviousness for chemical compounds
July 24, 2008
Post by Blog Staff
In a decision Monday, the Federal Circuit affirmed a district court's decision finding asserted claims of a patent valid and enforceable. Specifically, the court affirmed a finding that the asserted claims were nonobvious as a matter of law, and that the evidence did not support a finding of inequitable conduct. The Federal Circuit, applying KSR Int'l Co. v. Teleflex Inc. in the context of similarly-st.......
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Purported inventor who waited eight years to file suit could not overcome presumption of laches
July 17, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit upheld a district court's grant of summary judgment due to laches and applicable state statute of limitations in an inventorship case. The plaintiff, having waited more than eight years after finding out about the patents to file suit, claimed that an intervening reexamination should have reset the time for determining laches and that the defendant's "uncl.......
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Adaptation of prior art bidding system to the web obvious under KSR and Leapfrog
July 17, 2008
Post by Blog Staff
In a decision Monday, the Federal Circuit reversed a district court's permanent injunction and denial of judgment as a matter of law in a patent infringement case. A jury determined the asserted claims of the patent were not obvious and that the defendant willfully infringed, and awarded $38.5 million in damages, which the district court enhanced to nearly $77 million based on the willful infringement findin.......
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Consent judgment with no explanation of how claim construction affected noninfringement vacated
July 17, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit vacated a consent judgment entered by a district court and remanded the case for clarification. The district court entered a consent judgment, stipulated by the parties, stating the defendants' products did not infringe under the district court's claim construction of several terms, but that the plaintiff could still appeal the claim construction.The Federal Circ.......
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Reverse doctrine of equivalents still a losing argument at the Federal Circuit
July 11, 2008
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed a district court's finding of patent validity and patent infringement. The Federal Circuit found no error in the district court's holding that the reverse doctrine of equivalents was inapplicable and that claim preclusion prohibited the defendant from raising other validity challenges. Specifically, the defendant did not establish a prima facie case .......
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Failure to consider evidence of good faith leads to reversal of inequitable conduct finding
June 25, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's finding of no infringement and invalidity for obviousness, and reversed the district court's finding of unenforceability due to inequitable conduct.The Federal Circuit, citing KSR, noted that an obviousness analysis can take account the inferences and creative steps that a person of ordinary skill in the art would employ, and held th.......
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Claim construction and finding of noninfringement affirmed
June 20, 2008
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed a district court's claim construction and grant of summary judgment of non-infringement. The patent holder's proposed claim interpretation relied heavily on means-plus-function language and an embodiment in the specification not covered by the claim construction. The Federal Circuit found that the failure to use clear "means-plus-function languag.......
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Litigation misconduct and inequitable conduct lead to exceptional case, fees for defendant
June 18, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed an award of attorneys' fees for a prevailing defendant in an infringement case. The district court held the case was exceptional under § 285 because the patent holder had engaged in inequitable conduct (a finding previously affirmed), asserted frivolous claims, and engaged in litigation misconduct. The district court also held that it would be mani.......
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Three sentences insufficient to explain why a case is exceptional
June 17, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit vacated an award of attorney fees under § 285. The district court only provided a three-sentence explanation as to why the case was exceptional. The Federal Circuit found this insufficient, as there was no explanation of the facts underlying the findings made by the court. As a result, the court vacated the award and remanded for more detailed findings. Innova.......
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Legal owner responsible for timely payment of maintenance fees, equitable owner out of luck
June 11, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's grant of summary judgment upholding the USPTO's denial of a request to reinstate a patent for failure to pay maintenance fees. The patentee had assigned his invention to his employer, who had subsequently allowed the patent to expire due to non-payment of the maintenance fee. The patentee argued that he had equitable title to the .......
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Partially does not include totally, judgment of noninfringement affirmed
June 05, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's claim construction and its related judgment of noninfringement. The court declined to import a meaning which went against the plain meaning of the disputed term, and stated if the patentee had intended such a meaning, it should have done so explicitly. The term at issue was "partially hidden from view," and the court affirmed.......
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No lost profits when patent owned by parent but practiced by subsidiary
June 04, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit affirmed a district court's grant of summary judgment in the damages phase of a patent infringement case denying recovery for lost profits. The patentee's wholly-owned subsidiary actually practiced the claimed invention, but the subsidiary paid a standard license royalty to the patentee for use of the invention, and the subsidiary's profits did not "f.......
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Claim construction from different case against different defendant applies in subsequent case
June 03, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's construction of a patent claim in an infringement case. However, the court vacated the district court's grant of summary judgment of noninfringement and remanded. The Federal Circuit held that a prior interpretation of the claim in a suit against a different alleged infringer required the claim construction adopted by the district co.......
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Second prong of declaratory judgment jurisdiction test survived MedImmune
May 29, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's grant of summary judgment of noninfringement and its related finding that the court had declaratory judgment jurisdiction. The court, for the first time since the Supreme Court's MedImmune decision, addressed the second prong of its pre-MedImmune declaratory judgment test. The court held this portion of the test, requiring ".......
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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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Intrinsic evidence supported pre-Phillips claim construction; finding of noninfringement affirmed
May 15, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's finding of noninfringement. The only disputed issue was one of claim construction. Although the district court issued its claim construction ruling before the Federal Circuit's Phillips decision and relied exclusively on a definition from a technical dictionary for its construction of the relevant term, the Federal Circuit still u.......
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Priority claim contained in data sheet and appended via certificate of correction valid
May 15, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit vacated a district court's denial of a preliminary injunction. The district court denied the injunction on the basis of a substantial question of validity of the patent. The accused infringer alleged the patent was invalid under 35 U.S.C. § 102(b) based on a prior public use by the patentee, and argued that created a substantial question regarding the valid.......
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No claim preclusion unless second accused product essentially the same as product in first suit
May 14, 2008
Post by Blog Staff
In a Tuesday decision, the Federal Circuit reversed a district court finding that a patent infringement suit was barred by claim preclusion. At issue was whether a claim for patent infringement was barred under the doctrine of claim preclusion when that claim could have been brought in a prior case. The patentee sued for infringement on the basis of one product, and during that lawsuit, learned of a second prod.......
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Finding of inequitable conduct affirmed, Judge Rader expresses concern over resurgence of defense
May 14, 2008
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court's finding of inequitable conduct resulting from Rule 132 declarations that were used to overcome obviousness and anticipation rejections. The declarations used a difference in half-lives to distinguish the claimed composition over the prior art, however, it failed to indicate that the comparative half-lives were calculated using different init.......
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Claim construction and noninfringement affirmed on one patent, vacated on another
May 13, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit vacated a district court's grant of summary judgment of noninfringement of one patent and affirmed summary judgment of noninfringement of another. The determinations turned on the construction of one claim element in each patent.In the first patent, the court held that there was sufficient disclosure in the specification to permit the broader construction of the c.......
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Claim term construed by construing different term in specification deleted from claim
May 12, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed-in-part and vacated-in-part a district court's summary judgment of noninfringement based on a revised claim construction of two claim terms. The court, in somewhat of a departure from its typical practice, also construed one additional term that appeared likely to be relevant on remand, but which did not form the basis for the summary judgment ruling.Whil.......
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Hybrid vehicle patent not infringed; invalidity issues need not be reached on appeal from ITC
May 12, 2008
Post by Blog Staff
In an appeal from the International Trade Commission, the Federal Circuit affirmed the Commission's determination of noninfringement of a patent. The court, however, did not consider the ITC's finding of nonenablement on appeal. While in the context of a district court case a counterclaim for invalidity is not mooted by a finding of noninfringement, the court held that because invalidity can only be rai.......
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District court's claim construction too narrow, but noninfringement finding affirmed anyway
May 07, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit held that a district court construed a claim limitation too narrowly. However, even under the broader construction, summary judgment was still appropriate, because there was no genuine issue of fact that the accused method still did not practice that element, either literally or under the doctrine of equivalents. PSN Illinois (PSN) owns a patent relating to a method .......
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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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Offer of judgment providing full recovery mooted case, preventing opinion regarding spoliation
May 01, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit vacated a district court's order denying a declaratory judgment plaintiff attorney fees, but including a scathing description of alleged spoliation by the patentee/DJ defendant. The Federal Circuit held that the district court's decision was an improper advisory opinion, and therefore vacated with instructions to dismiss.The patentee, before bringing suit agains.......
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Elements of infringement claim not jurisdictional; "sale" occurs at location of buyer and seller
April 29, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's denial of the defendant's motion to dismiss for lack of subject matter jurisdiction. The court also denied the defendant's post-verdict motion for judgment as a matter of law. The defendant contended that because it shipped its allegedly infringing products f.o.b. from its place of business in Canada, it did not sell or import.......
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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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Quality of investigation irrelevant to whether claims objectively baseless
April 25, 2008
Post by Blog Staff
In a Wednesday decision, the Federal Circuit affirmed a district court decision that a patent holder's communications with a competitor's customers that the competitor's products were infringing were not objectively baseless, and therefore could not support state law tort claims of unfair competition, intentional interference with contractual relations, interference with prospective economic advantage.......
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Covenant not to sue insufficient to defeat DJ jursidiction because of Hatch-Waxman issues
April 21, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit addressed the issue of declaratory judgment jurisdiction in the context of the Hatch-Waxman Act. The court found that a unilateral covenant not to sue on a patent does not defeat declaratory judgment jurisdiction because there is still a "restraint on the free exploitation of non-infringing goods." This case had a somewhat peculiar factual scenario: the first.......
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Patentee could not rebut presumption of estoppel; noninfringement finding affirmed
April 21, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court decision holding that application of the doctrine of equivalents was barred as the Festo presumptions had not been rebutted. The court noted that the patentee did not show that the alleged equivalent was unforeseeable at the time of making the narrowing amendment (which was the cancellation of an independent claim and rewriting a dependent claim.......
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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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Assignee of patent not bound by previous assignee's agreement to arbitrate
April 17, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a finding by a district court that a party may not be compelled to arbitrate as provided in a patent license agreement when the party was not a signatory party to the agreement but merely an assignee of the patent covered by the agreement. As a result, the infringement case continues before the district court.More detail of Datatreasury Corp. v. Wells Fargo &.......
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Party defaulting before district court and enjoined cannot attack registration via cancellation
April 17, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit held that a party against whom a default judgment was entered in a trademark infringement case before a district court cannot thereafter petition to cancel the registration at issue before the TTAB. The TTAB held the claim barred by res judicata. The court held that res judicata did not apply, because an invalidity counterclaim in the district court was not compulsor.......
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Preamble not limiting when duplicative of claim limitations and not added to overcome rejection
April 16, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit held that a district court erred in its construction of several claim terms in a patent, and as a result, vacated the district court's summary judgment of noninfringement and no invalidity. The court affirmed the district court's decisions regarding several other issues, including laches, inequitable conduct, and inventorship.One of the claim terms at issue was i.......
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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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Denial of injunction against sending letters asserting infringement affirmed
April 10, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed the denial of a preliminary injunction seeking to prevent a patentee from representing to the defendant's customers that the defendant's product potentially infringed the plaintiff's patent. The patent at issue had a lengthy and complicated prosecution history that included an interference proceeding. In that proceeding, the BPAI ruled another par.......
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If ordinary meaning of claim term does not resolve disputed construction, court must construe term
April 10, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit vacated and remanded a jury's finding of willful infringement case back to a district court, based on errors in claim construction and application of the doctrine of equivalents. The district court's original Markman hearing determined that no construction was necessary for a particular claim term, "only if," whose scope was disputed by the parties. .......
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Same claim term can be interpreted differently in the same claim if specification warrants
April 09, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit decided a case addressing the limitations of what constitutes "insolubly ambiguous" claim terms in order to amount to indefiniteness. The district court held the asserted claims invalid because they impermissibly mixed two statutory classes of subject matter, as well as because they required construing the same term differently in the same claim for the clai.......
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Federal Circuit: And can mean or, if it makes the claim make sense
April 08, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent. The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or." Specifically, based on the specification and other claims, the court determined such a construc.......
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Computer-implemented means-plus-function claim invalid when no algorithm disclosed in specification
March 31, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a final judgment of invalidity of all claims of a patent indefinite. The claims had several means-plus-function clauses that were computer-implemented, however no algorithms for implementing the claimed functions were disclosed in the specification. The district court held the claims invalid because there was no "structure" (i.e., algorithm) disclosed.......
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Patent ownership may change by operation of law, including operation of foreign law
March 31, 2008
Post by Blog Staff
In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership. The inventor of the patent died intestate as the only owner of the patent. While his two daughters executed transfers of ownership to the inventor's widow, the district court held that under 35 U.S.C. § 261, the executor of the estat.......
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Patent for better mousetrap obvious, secondary indicia could not rebut "strong prima facie case"
March 31, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit addressed the issue of post-KSR obviousness and fraudulent misrepresentation. Regarding obviousness, the court held that the secondary indicia of nonobviousness simply could not overcome a "textbook case" of claims involving "a combination of familiar elements according to known methods that does no more than yield predictable results." Interpreti.......
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Patentee cannot recapture claim scope disavowed during prosecution to prove infringement
March 24, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's claim construction and its concomitant grant of summary judgment of noninfringement, as well as its denial of attorney fees under § 285. The district court held the patentee had, during prosecution of the patent at issue, made a clear and unmistakable disavowal of claim scope, and as a result, under the doctrine of prosecution disclai.......
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271(e) safe harbor applies to both product and method claims in ITC proceedings
March 19, 2008
Post by Blog Staff
In a ruling today, the Federal Circuit affirmed in part a decision by the International Trade Commission (ITC) concerning the application of 19 U.S.C. § 1337 and 35 U.S.C. § 271(e)(1) to imported products and products imported produced via a patented process. The main issue before the court was whether the safe harbor against infringement provided by § 271(e) applies in proceedings under §.......
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Section 121 safe harbor applies only to divisional, not continuation-in-part; later patent invalid
March 12, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement. There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds. The method of use patent .......
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When DJ and infringement suits both filed, transfer factors determine appropriate forum
March 05, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit decided a case addressing the requirements for a declaratory judgment action post-MedImmune . The court reversed and remanded a district court's decision that there was no declaratory judgment jurisdiction applying the pre-MedImmunereasonable apprehension of suit standard rejected by the Supreme Court. The Federal Circuit applied the MedIm.......
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Dependent claim can be construed to be broader than independent claim based on prosecution history
March 03, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit held a district court construed 1 of 2 claim terms correctly, and incorrectly concluded that prosecution history estoppel barred application of the doctrine of equivalents to a third claim term because the narrowing amendment was only tangentially related to the equivalent at issue. As a result, the court affirmed in part, reversed in part, and remanded.One of the cla.......
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Post-verdict infringement royalty must take into account changed bargaining position of parties
February 28, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit addressed the issuance, stay, and subsequent dissolution of a permanent injunction. Further, the court addressed how damages should be allocated from infringement during a stay. The district court took the jury's reasonable royalty for pre-verdict infringement and trebled it to determine the applicable post-verdict royalty. The Federal Circuit vacated this decisio.......
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On-sale bar cannot be avoided by experimentation conducted by patentee's customer
February 25, 2008
Post by Blog Staff
In a decision Thursday, the Federal Circuit provided additional guidance on the on-sale bar of § 102(b). In the case, the patentee developed a series of prototypes that were then sold to its customer, who then experimented with the prototypes and requested modifications to the prototypes. The prototypes were also accompanied by offers to sell production models of the prototypes. The court was clear in tha.......
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Another preliminary injunction vacated on appeal, this time because of claim construction
February 22, 2008
Post by Blog Staff
For a second time this week, the Federal Circuit vacated a preliminary injunction entered by a district court. This time, the court found the district court's claim construction too broad, and under the courts revised, narrower construction, found that the plaintiffs were not likely to succeed on the merits of the case. As a result, the Federal Circuit vacated the injunction and remanded the case.More detai.......
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Seizure of goods with counterfeit marks not an "embargo," so no CIT jurisdiction to challenge fine
February 21, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit vacated the decision of the Court of International Trade (CIT) and remanded with instructions to dismiss the plaintiff's complaint for lack of subject matter jurisdiction.The case arose out of a civil fine levied against the plaintiff for importation of counterfeit goods. The plaintiff brought suit in the CIT to contest the fine. The CIT found that it had subjec.......
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Post-KSR obviousness arguments cast sufficient "doubt" on validity to vacate preliminary injunction
February 20, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit vacated a preliminary injunction entered in the Northern District of Ohio enjoining the selling and copying of a product used to practice a method claimed in a patent. In doing so, the Federal Circuit utilized of the traditional four–factor test for preliminary injunctions and specifically analyzed the first factor, likelihood of success on the merits. The cou.......
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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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Discovery needed to determine effect of employment agreement on patent ownership, but no jury trial
February 14, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit remanded a case for further discovery, finding that the district court abused its discretion by denying jurisdictional discovery regarding patent ownership due to the "central relevance" of the information. The patent ownership dispute arose from an employment contract between one of the two inventors and his employer that purportedly assigned all inventions.......
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Request to stay injunction pending appeal may also be considered notice of appeal; estoppel bars DOE
February 12, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit reversed a jury's verdict of infringement under the doctrine of equivalents. The court had previously vacated-in-part and reversed-in-part the district court's earlier summary judgment of infringement, the result of which was the jury trial conducted by the district court. The combination of the Federal Circuit's mandate in the earlier appeal and applicat.......
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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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Claims requiring an "insert" do not cover products with similar structure not "inserted"
February 08, 2008
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed a district court ruling granting summary judgment of non-infringement. At the outset, the court noted the patent at issue had been before the court multiple times, and the claim terms at issue in this appeal had already been construed by the court in earlier cases.As the district court applied the Federal Circuit's earlier construction, the court had litt.......
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Federal Circuit once again affirms that saving patented seeds for replanting is infringement
February 06, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit once again affirmed a finding of infringement against a farmer who saved seeds covered by a patent to replant the following year. The plaintiff in this case, Monsanto, has brought similar cases in the past, and they have resulted in similar outcomes.Here, the asserted claims covered the genetic sequence for Monsanto's Roundup Ready gene, which, when incorporated.......
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Infringement of two claims and $74 million in damages affirmed, injunction reinstated
February 05, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed-in-part and reversed-in-part a jury verdict of infringement of a patent owned by Tivo relating to its DVR technology. The ruling was based on claim construction, with the court finding that, based on the correct construction of claims directed to the DVR hardware, there was no infringement of those claims. However, the claims directed to the software were c.......
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Federal Circuit reiterates that full scope of claim must be enabled to meet enablement requirement
February 04, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's decision holding several claims of two patents invalid for lack of enablement. The district court held that while a portion of the scope of the claims was enabled, the full breadth of the claims were not, and as a result, the claims did not meet the enablement requirement of § 112.The Federal Circuit affirmed. The court stated tha.......
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Mandamus inappropriate unless no other way to get relief, even if result is unnecessary trial
February 04, 2008
Post by Blog Staff
In a precedential order last week, the Federal Circuit denied a petition for a writ of mandamus seeking to direct a district court to vacate its summary judgment order in favor of a patent infringement plaintiff and to enter judgment in favor of the alleged infringer. The district court's order did not completely resolve the case, but did prevent the alleged infringer from presenting several defenses, includ.......
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Claim construction excluding disclosed embodiment improper absent disclaimer of some kind
January 30, 2008
Post by Blog Staff
In a decision today, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement. The district court's construction of one of the claim limitations resulted in certain embodiments of the invention disclosed in the figures to be excluded from the scope of the claims. Based on this construction, the parties stipulated that there was no infringe.......
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Sufficient structure recited in claim limitation using "means" to prevent application of - 112 - 6
January 30, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement. The district court held the relevant claim term was a means-plus-function limitation, as it used the word "means," as well as because in an interview summary in the prosecution history, it appeared the USPTO interpreted the term as a means-plus-functio.......
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No damages for convoyed sales when no functional relationship between patented and unpatented goods
January 29, 2008
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court's decision setting aside the portion of a jury verdict awarding convoyed sales to a patentee, and sustaining the portion of the verdict finding the alleged infringer had not shown invalidity via public use. There was no evidence of a functional relationship between the patented and unpatented goods, instead the two were sold together as a mat.......
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Claims to "fragile gel" indefinite even though term defined in specification
January 28, 2008
Post by Blog Staff
In a second decision Friday, the Federal Circuit affirmed a district court's finding of 35 U.S.C. § 112, second paragraph indefiniteness. The term was defined in the specification, however the district court held that definition was too subjective and unclear, largely because it relied on relative terms. The proper scope was also not discernable from the figures, as they did not define the scope of the.......
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Disclosure of prior art abstract only when more relevant detail known results in inequitable conduct
January 28, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's finding of inequitable conduct based on nondisclosure of details of a poster presentation presented at a scientific conference. While the patentee disclosed the abstract during prosecution of the patents-in-suit, notes taken by one of the patentee's employees with much more detail of what was actually presented at the conference were n.......
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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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Federal Circuit again tackles the meaning of "a"
January 18, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit affirmed-in-part and reversed-in-part a district court's grant of summary judgment of non-infringement with respect to two patents relating to cleaning printing press cylinders. Both findings were based on issues of claim construction, with one centering around an issue that has reached the Federal Circuit multiple times: the definition of the word "a.".......
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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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Pre-KSR obviousness instruction does not result in plain error post-KSR
January 10, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit affirmed findings of infringement of two patents by two defendants. The court also reversed an invalidity ruling of one of one claim that had been the subject of reexamination, but remanded the case to the district court for a determination of the obviousness of one claim based on a revised claim construction and for a determination of damages.While the case went to t.......
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Term defined in specification limited even though partially characterized as exemplary
December 28, 2007
Post by Blog Staff
In a recent decision, the Federal Circuit vacated and remanded a limited exclusion order by the International Trade Commission. The ITC entered an exclusion order that prevented importation of products produced by a method that infringed two patents.The Federal Circuit vacated the finding of infringement, holding that under the correct claim construction, there was no literal infringement. The court held that .......
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Corroboration of reduction to practice must corroborate that invention worked for intended purpose
December 05, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed the BPAI's decision in an interference proceeding awarding priority to the senior party. The junior party attempted to show an actual reduction to practice before the senior party's priority date.While the junior party offered evidence of an earlier actual reduction to practice, the corroborating evidence was insufficient. The corroborating witness just.......
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Statement during prosecution not a clear and unmistakable disavowal, no prosecution disclaimer
November 29, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit partially reversed a district court's summary judgment of noninfringement of a patent directed to closed circuit television systems. In granting summary judgment, the district court held that the doctrine of prosecution disclaimer limited the scope of the claims, finding the inventors characterized the invention narrowly in response to an office action.The Federal.......
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Triangular opening not equivalent to vertical slit; summary judgment of no infringement affirmed
November 28, 2007
Post by Blog Staff
Today the Federal Circuit affirmed a district court's determination that the patent claim term "closeable vertical opening" required a slit-like shape that is perpendicular to the pan of the horizon instead of simply an opening with a shape that is taller than it is wide. Further, the court found that an accused product which creates a triangle-flap opening did not operate in a substantially simila.......
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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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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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Allegedly false statements insufficient to warrant setting aside judgment under Rule 60(b)(3)
November 17, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's decision denying a motion to set aside a judgment under Rule 60(b)(3) on charges of fraud. In an earlier litigation, a patent was invalidated under § 102(g) as previously invented by another. That decision was affirmed on appeal.More than a year later, new evidence came to light that some statements made during the original litig.......
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Remand to state court resulting from declining supplemental jurisdiction unreviewable on appeal
November 13, 2007
Post by Blog Staff
Addressing an issue of first impression, the Federal Circuit today held that a district court's decision remanding a case to state court on the basis of declining supplemental jurisdiction was unreviewable. The court determined that this decision was within the class of remands described in 28 U.S.C. § 1447(c). Because of this, review was barred by § 1447(d), and the court dismissed the appeal.Thi.......
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Incorporation by reference did not incorporate necessary disclosure, priority chain broken
November 07, 2007
Post by Blog Staff
Today, the Federal Circuit held a patent was anticipated under 35 U.S.C. § 102(b) by another patent earlier in the patent-in-suit's priority chain. The court held the district court erred in finding that the patent at issue was entitled to a priority date of the earlier-filed patent, leading to the district court's improper conclusion that the patent was not anticipated by an earlier filed patent.T.......
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Application of doctrine of equivalents to range limitation in claim does not vitiate the limitation
November 05, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's claim construction, but reversed its rulings regarding the sufficiency of notice of infringement and the applicability of the doctrine of equivalents. Regarding sufficiency of notice under 35 U.S.C. 287(a), the court held that while the patentee did not mark its products, its notice of infringement via letter was sufficient where the patent.......
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Failure to discover title defect doesn't make case exceptional; Rule 11 burden-shifting inapplicable
November 02, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit addressed when a case may be considered "exceptional" under 35 U.S.C. § 285, and therefore potentially warrant an award of attorney fees. The plaintiff purchased rights to a patent "as is" from a company going through bankruptcy. However, it was later revealed that the company did not have full legal title to the patent, because all inventors.......
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ITC's claim construction reversed, revised construction leads to Section 337 violation
November 01, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit reversed a decision of the U.S. International Trade Commission that a violation of § 337 of the 1930 Tarriff Act had not occurred. The court reversed the ITC's claim construction, and based on the revised claim construction, found the accused products infringed. This modified claim construction also resulted in the plaintiff's U.S. product falling wit.......
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Federal Circuit denies rehearing en banc in DC prescription drug price case
October 30, 2007
Post by Blog Staff
In a precedential order today, the Federal Circuit denied a petition for rehearing and rehearing en banc in Biotechnology Industry Organization vs. District of Columbia. On August 3, the court held that the Prescription Drug Excessive Pricing Act of 2005 enacted by the District of Columbia City Council, which prohibited a patented drug from being sold in the District of Columbia for an excessive price, was pree.......
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Waiver of immunity in earlier case does not operate as waiver in later case involving same patent
October 25, 2007
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed a district court's decision that a state had not waived its Eleventh Amendment sovereign immunity. The state had intervened in an earlier, related action, but that action was subsequently dismissed for improper venue. The court held that while the state waived its immunity in the first suit by intervening, the waiver did not apply to the subsequent lawsui.......
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Infringement finding and denial of permanent injunction in favor of ongoing royalty affirmed
October 18, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a jury verdict finding infringement under the doctrine of equivalents of a patent relating to hybrid engines used in motor vehicles. The court also affirmed the district court's denial of a permanent injunction and its award of an ongoing royalty on infringing vehicles, rejecting the argument that the "compulsory license" would prevent the patent ho.......
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Patent prosecution malpractice claim properly heard in federal court and appealed to Federal Circuit
October 16, 2007
Post by Blog Staff
In its second decision yesterday in a legal malpractice case, the Federal Circuit affirmed the district court's decision that jurisdiction was proper over a legal malpractice claim on the basis that the malpractice claim involved a question of claim scope which presented a substantial question of patent law. The alleged malpractice involved prosecution of a patent using "consisting of" in a claim a.......
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"Exclusive enterprise licensee" does not have standing to sue for infringement without patent owner
October 15, 2007
Post by Blog Staff
In a decision today, the Federal Circuit reversed a decision by a district court declining to dismiss a patent infringement case brought by a party possessing an "exclusive enterprise license" in the patent-in-suit. The trial court certified the question of licensee standing to the court for interlocutory appeal. In reversing the district court's denial of the defendant's motion to dismiss, th.......
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Malpractice claim regarding patent prosecution and litigation sufficient for federal jurisdiction
October 15, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court decision finding that where patent infringement is a necessary element of a malpractice claim arising from alleged patent prosecution errors as well as the mishandling of prior patent litigation, federal question subject matter jurisdiction exists.More detail of Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P. after the j.......
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Prior art addressing different problem shows what was "common knowledge," obviousness affirmed
October 15, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed the rejection of all claims subject to reexamination as obvious. The USPTO had rejected the claims based on a combination of three prior art references.The court provided an expansive discussion of obviousness post-KSR. The court noted that where the Federal circuit had gone wrong in KSR was holding that because a prior art reference did not address the same .......
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"Ordinary creativity" of one of ordinary skill in the art used to show claims not indefinite
October 15, 2007
Post by Blog Staff
In a decision today the Federal Circuit held that the district court had incorrectly determined that AllVoice Computing PLC's patent was invalid for indefiniteness and failure to meet the best mode requirement. In reaching its decision, the Federal Circuit determined that the lower court had used the prosecution history of the patent to interpret the claims too narrowly and that the alleged best mode violatio.......
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Patentee need not join in appeal for exclusive licensee to retain standing
October 14, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court decision that prosecution history estoppel barred application of the doctrine of equivalents, and accordingly affirmed the district court's summary judgment of no infringement.The court also held, as a matter of first impression, that when joinder of the patent owner is required before the district court for an exclusive licensee to have pru.......
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Contempt proceedings proper, but filing ANDA not within scope of injunction, so no contempt
October 12, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's decision to hold a contempt proceeding for a defendant's alleged violation of an injunction "barring it from commercially manufacturing, using, selling, offering to sell, or importing into the United States generic divalproex sodium infringing" two patents. The court also affirmed the district court's decision to enlar.......
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Agreement to "submit to jurisdiction" is waiver of 11th Amendment immunity by state university
October 11, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit held that a state university had waived its Eleventh Amendment immunity from suit. The university entered into an agreement with a "governing law" provision that stated that "all parties agree to proper venue and hereby submit to jurisdiction in the appropriate State or Federal Courts of Record sitting in the State of Michigan."The court held that.......
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Five things not to do when prosecuting patent applications
October 11, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's judgment of patent unenforceability as a result of inequitable conduct on behalf of the applicant. The court affirmed that five different actions on the part of the patentee constituted inequitable conduct:1. Failure to identify the association between the applicant and the individual providing a Rule 132 affidavit during prosecutio.......
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Denial of interim patent term extension affirmed
October 05, 2007
Post by Blog Staff
In a decision rereleased as precedential yesterday, the Federal Circuit affirmed a district court’s denial of a preliminary injunction seeking to compel the Director of the United States Patent and Trademark Office to grant a request for an interim patent term extension under 35 U.S.C. § 156(e)(2).Somerset Pharmaceuticals, Inc. ("Somerset") is the owner of a reissue patent that expired August.......
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Claims to using product made via another claim are dependent claims, noninfringement affirmed
October 04, 2007
Post by Blog Staff
In a battle between two agricultural heavyweights, Monsanto and Syngenta, the Federal Circuit affirmed a district court's ruling that Syngenta did not infringe two Monsanto patents and that a third was invalid for lack of enablement. The patents relate to tolerance to the herbicide glyphosate.The court affirmed the district court's claim construction, noting that certain claims directed toward manipulat.......
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Agreement to assign to employer requires separate assignment; dismissal for lack of standing vacated
October 01, 2007
Post by Blog Staff
In a decision released late Friday, the Federal Circuit vacated and remanded a district court's decision that a plaintiff did not have standing to sue for patent infringement. At issue was whether a joint inventor of the patent had assigned his interest in the patent to a third party, thereby making the third party a necessary party to the case. The court concluded that the employment agreement signed by th.......
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"Comprised of" means the same as "comprising," judgment of noninfringement affirmed
September 27, 2007
Post by Blog Staff
Today, the Federal Circuit addressed how to interpret the phrase "comprised of" in a patent claim. In holding that the phrase should be construed in the same open-ended way the term "comprising" is traditionally construed, the court disagreed with the district court's finding that the phrase was closed-ended and excluded the presence of all elements beyond those presented. However, the d.......
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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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Finding of infringement of two patents affirmed, one reversed, damages award vacated
September 27, 2007
Post by Blog Staff
In a highly anticipated recent decision, the Federal Circuit affirmed the judgment of infringement against Vonage with respect to two Verizon patents, holding that the district court did not err in its construction of the disputed claim terms and that the claims were not obvious. With respect to a third patent, the Federal Circuit held the district court improperly construed a disputed claim term and therefore.......
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Summary judgment of noninfringement reversed: challenge to reliability of expert testimony waived
September 25, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit reversed a district court's grant of summary judgment of noninfringement. The court held the district court improperly made a factual determination regarding the reliability of an expert's test used to establish infringement. Based on statements made during summary judgment briefing and argument, the defendants could not argue the tests were unreliable for summar.......
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Claims to a "method for mandatory arbitration resolution" not drawn to statutory subject matter
September 24, 2007
Post by Blog Staff
In the second of two decisions regarding the scope of patentable subject matter on Thursday, the Federal Circuit found claims in a patent application directed toward a "method for mandatory arbitration resolution" as not directed toward statutory subject matter under § 101. The USPTO had not addressed the statutory subject matter issue, rather the Federal Circuit had requested supplemental briefi.......
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Injunction against patentee's assertions of infringement reversed, bad faith standard not met
September 24, 2007
Post by Blog Staff
In a decision last week, the Federal Circuit vacated a preliminary injunction after finding that the district court abused its discretion. The district court enjoined a patent owner from any future correspondence with any existing or potential customers of an alleged infringer (started by former employees of the patent owner), essentially stopping the patentee from sending letters asserting infringement of its p.......
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Declaratory judgment jurisdiction exists, sufficient corroboration of prior public use to invalidate
September 24, 2007
Post by Blog Staff
In a decision last week, the Federal Circuit upheld a district court's decision that a case or controversy existed providing subject matter jurisdiction and that the patent was invalid under 35 U.S.C. § 102(b) based on a public use more than a year before the patent's priority date. A licensee's decision to stop royalty payments combined with a threat to pursue legal action in response created .......
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Federal Circuit clarifies standard for proving joint infringement
September 20, 2007
Post by Blog Staff
The Federal Circuit issued a decision today affirming a district court's finding of noninfringement when a defendant neither carried out all of the steps of a method claim nor was responsible for the actions of the parties that did carry out all steps to the method claim. In doing so, the court clarified the proper standard for joint infringement by multiple parties of a single claim.More detail of BMC Res.,.......
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Claims to "signal" with no reference to physical structure not patentable subject matter
September 20, 2007
Post by Blog Staff
In the first of two decisions today regarding the scope of statutory subject matter, the Federal Circuit held that claims directed toward a "signal" were not statutory subject matter under § 101. Earlier, the USPTO allowed claims directed toward a method of embedding data in a signal; the rejected claims were the reverse: they were the signals with the data embedded as opposed to a method for doi.......
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If you just have the right to sue under a patent, don't expect to actually be able to sue anyone
September 20, 2007
Post by Blog Staff
Yesterday, the Federal Circuit clarified the requirements for a party to attain standing to bring a patent infringement suit when the party does not hold all substantial rights in the patent. In defining what constitutes an "injury in fact" under the constitutional standing requirement, the court held that, when a party does not have all substantial rights to a patent, injury in fact would only exist w.......
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Plaintiff successfully skirts the minimum requirements for pleading, dismissal of complaint reversed
September 17, 2007
Post by Blog Staff
In a decision issued Friday, the Federal Circuit applied the Supreme Court's recent Twombly decision to the pleading requirements for patent and trademark causes of action. The court held that patent infringement plaintiffs need not specifically plead the claims infringed. Further, the court applied a similarly open standard to pleading trademark infringement cases. The pro se nature of the plaintiff combin.......
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"Ordinary observer" can be commercial buyer when buyer uses designed item as part of retail product
September 13, 2007
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court’s order granting summary judgment of non-infringement of two design patents. Specifically, the court acknowledged that the Supreme Court's decision in Gorham Co. v. White held that an "ordinary observer" for purposes of design patent infringement cannot be an expert. Nevertheless, in this case, the "ordinary observer&.......
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Claim construction and noninfringement finding affirmed; prosecution history estoppel bars DOE
September 12, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court's grant of summary judgment of noninfringement of a patent relating to a "gutter guard" designed to keep debris out of gutters. The court found the district court's claim construction correct, as it properly considered dictionary definitions when the specification provided no additional guidance on the meaning of the term "w.......
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Finding of induced infringement reversed: insufficient evidence of direct infringement
September 12, 2007
Post by Blog Staff
Today, the Federal Circuit held that hypothetical instances of direct infringement are not enough to establish that a party induced direct infringement of a patent. Instead, there must be evidence of instances of actual infringement in order to establish infringement was induced if there are both infringing and non-infringing ways to operate a device. Because there was no such evidence in this case, the distric.......
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Federal Circuit makes previous nonprecedential obviousness opinion precedential
September 12, 2007
Post by Blog Staff
Today the Federal Circuit decided to change the status of Daiichi Sankyo Co. v. Apotex, Inc. (previously blogged about here), from nonprecedential to precedential. This is noteworthy because this was one of the first obviousness cases decided by the Federal Circuit after KSR, and dealt specifically with one of the Graham factors: the level of ordinary skill in the art. Click here for our previous summary, and.......
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Purified stereoisomer of compound in known mixture obvious in light of expected potency
September 11, 2007
Post by Blog Staff
In a decision today, the Federal Circuit reversed a district court's pre-KSR decision of nonobviousness. The claims were directed toward a particular isomer of a compound that was "substantially free" of other isomers. The prior art included a mixture that included the claimed isomer as well as a different isomer.The court found the claims obvious because it was known in related compounds that the.......
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Full scope of claims must be enabled to meet enablement requirement
September 07, 2007
Post by Blog Staff
The Federal Circuit yesterday affirmed a district court's holding of invalidity based on lack of enablement. At issue was a claim that encompassed two different types of structures for side-impact sensing in motor vehicles, a mechanical sensor and an electronic sensor. The court noted that the full scope of a claim must be enabled in order to satisfy § 112, and that "the specification, not the kno.......
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"Outer surface" cannot encompass interior surface based on statements made in prosecution history
September 07, 2007
Post by Blog Staff
The Federal Circuit yesterday reversed a district court's claim construction and its corresponding determination of literal infringement. The court found that the prosecution history of the patents negated the district court's claim construction, and that, properly construed, there could be no literal infringement.The term at issue was the "outer surface" of a drive collar. The district court h.......
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Infringement and royalty rate affirmed; dismissal of willful infringement claim reversed
September 06, 2007
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed-in part a district court's grant of summary judgment of infringement of a patent, finding that the claims were properly held to include measuring devices that either directly or indirectly compare two signals to determine the proper measurement. The court reversed-in part the district court's damages award. The district court properly determined the rea.......
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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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When point of novelty is a combination of existing elements, it must be a "non-trivial" advance
August 30, 2007
Post by Blog Staff
In a case decided yesterday, the Federal Circuit clarified the point-of-novelty test for design patents when the point of novelty is a combination of existing design elements. The court adopted the rule that "to constitute a point of novelty, the combinations must be a non-trivial advance over the prior art." The court likened this analysis to an obviousness inquiry of a validity analysis. In a stron.......
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Reversible error if BPAI fails to consider rebuttal evidence of nonobviousness
August 29, 2007
Post by Blog Staff
The Federal Circuit today vacated a decision by the Board of Patent Appeals and Interferences affirming an examiner's obviousness rejection. The inventors submitted three declarations evidencing the nonobviousness of their invention (unexpected results and teaching away), but the Board did not consider the evidence, finding that it related only to an intended use of the invention, which was not relevant as.......
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Statements in specification and prosecution history limit claims notwithstanding claim language
August 27, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed in part and reversed in part a district court's decision granting summary judgment of noninfringement and invalidity. The Federal Circuit found that the district court had properly construed most of the asserted claims as being limited to "automatic computer determination of the finish positions of teeth" based on the specification and prosecution .......
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Equitable inventorship correction claim must be resolved after factually-overlapping fraud claim
August 27, 2007
Post by Blog Staff
The Federal Circuit issued a ruling Friday addressing the right to a jury trial in a case involving combined equitable (in the form of a correction of inventorship claim under 35 U.S.C. § 256 ) and legal (in the form of various tort claims) issues. The court held that the jury trial on the legal issues must precede the bench trial on inventorship when the legal issues have a common issue of fact with the inv.......
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USPTO not bound by district court claim construction on reexamination; obviousness affirmed
August 22, 2007
Post by Blog Staff
The Federal Circuit today addressed claim construction and obviousness in the context of a reexamination appeal. The patentee argued that the USPTO was bound, in reexamination, to apply the claim construction given the patents by a district court when the patents were in litigation before reexamination. The court found that because the USPTO was not a party to that litigation, issue preclusion could not apply,.......
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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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Priority claim to foreign filing awarded in interference; disclosure in compliance with section 112
August 21, 2007
Post by Blog Staff
The Federal Circuit yesterday addressed the requirements for the use of a foreign filing date as a priority date in a U.S. interference proceeding. The court awarded the interference party the priority benefit of the foreign filing date based on the "constructive reduction to practice of an invention whose disclosure is in compliance with the requirements of § 112." As a result, the court reverse.......
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Attorney cannot directly appeal finding of inequitable conduct absent formal sanctions
August 13, 2007
Post by Blog Staff
The Federal Circuit today addressed whether a prosecuting attorney who was found to have committed inequitable conduct during an infringement suit of the patent prosecuted may intervene to contest the finding. The court held that when an attorney is merely criticized by the court, not formally reprimanded, they have no standing to appeal. As a result, the court affirmed the district court's decision denying.......
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Priority claim under section 119 denied; foreign application not filed "on behalf of" U.S. applicant
August 08, 2007
Post by Blog Staff
Today the Federal Circuit addressed whether priority to an earlier-filed foreign application may be claimed under § 119(a) if there was no legal relationship between the foreign applicant and the U.S. applicant at the time the foreign application was filed. The court held that the right of priority under § 119(a) is personal and determined at the time of filing. As a result, in order to claim priori.......
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Federal Circuit reverses dismissal of DJ action; sufficient case or controversy exists
August 06, 2007
Post by Blog Staff
The Federal Circuit recently vacated the District Court for the Southern District of California's judgment granting a motion to dismiss five plaintiffs' (four joined on the appeal) declaratory judgment complaints for lack of subject matter jurisdiction, and remanded the case back to the district court to determine in its discretion whether to entertain the declaratory judgment actions.More details of Son.......
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Statements in specification lead to narrower claim construction and noninfringement
August 06, 2007
Post by Blog Staff
In a decision on Friday, the Federal Circuit affirmed a district court decision granting summary judgment of noninfringement. The only claim at issue required motors to apply a "pushing" force. The defendant's motors applied a "pulling" force that was, through intermediate apparatus, translated to a "pushing" force, but the court held that the patentee had disclaimed such devic.......
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Federal Circuit affirms preemption of D.C.'s Prescription Drug Excessive Pricing Act of 2005
August 02, 2007
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed the District Court for the District of Columbia's judgment that the federal patent laws preempted the District of Columbia's Prescription Drug Excessive Pricing Act of 2005. More details of Biotechnology Indus. Org. v. District of Columbia after the jump.The challenged legislation at issue is the Excessive Pricing Act, enacted by the District of Columbi.......
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Federal Circuit: Analogous art test survives KSR, but obviousness affirmed
August 02, 2007
Post by Blog Staff
In a case decided yesterday, the Federal Circuit affirmed a decision by the BPAI finally rejecting all but one claim of a patent under reexamination as obvious. The patentee admitted that all elements of the claims save one were present in two relevant prior art references and that another reference disclosed the final element, but argued that the third reference was nonanalogous art, and therefore the finding.......
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Federal Circuit provides more detail on FDA research exemption to infringement
July 30, 2007
Post by Blog Staff
The Federal Circuit recently decided a case on remand from the Supreme Court's decision regarding the research exception to patent infringement (35 U.S.C. § 271(e)(1), "The FDA exception"). The Federal Circuit reversed the district court's finding of infringement, holding that the experiments were not infringements because they were reasonably related to research that would be appropriate t.......
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Invalidity affirmed on double patenting grounds; inequitable conduct finding vacated
July 24, 2007
Post by Blog Staff
In the second of two rulings yesterday, the Federal Circuit found the patent on Toprol-XL® (a drug used to treat hypertension, angina, and congestive heart failure) invalid based on obviousness-type double patenting, affirming summary judgment on the issue. The court vacated and remanded the grant of summary judgment of unenforceability due to inequitable conduct, as the district court improperly equated a .......
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Federal Circuit affirms requirement to amend listing of goods to exclude goods in another class
July 23, 2007
Post by Blog Staff
In the first of two Federal Circuit rulings today, the court affirmed that the USPTO was within its authority when it refused to allow an applicant to rely on the international classification to clarify ambiguities in the listing of goods for a trademark. In affirming the TTAB, the court emphasized the deference due to the USPTO when determining the sufficiency of description of goods and services in a trademark .......
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Dismissal and covenant not to sue for past acts divests court of jurisdiction
July 20, 2007
Post by Blog Staff
In a case decided today, the Federal Circuit affirmed a district court's dismissal of a patent infringement defendant's counterclaim for invalidity for lack of subject matter jurisdiction. The patent holder voluntarily dismissed its claims for infringement and agreed not to sue for acts occurring before the dismissal, and there was an insufficiently "immediate" controversy between the parties t.......
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Federal Circuit affirms dismissal of opposition proceeding for lack of standing
July 11, 2007
Post by Blog Staff
In another nonprecediential ruling today, the Federal Circuit affirmed the TTAB's dismissal of an opposition filed against registration of the Dykes on Bikes mark.There are two requirements to have standing to file an opposition with the TTAB. The would-be opposer must have "both a real interest in the proceedings and a reasonable basis for a belief that he would be damaged by its registration." .......
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Determination of level of ordinary skill in the art erroneous, leads to finding of obviousness
July 11, 2007
Post by Blog Staff
In a nonprecedential ruling today, the Federal Circuit held that the district court incorrectly determined the level of ordinary skill in the art, and that when the level of skill was determined correctly, the invention was obvious based on a prior art reference that was directed toward those having greater skill than the district court determined. The patented invention related to the use of gyrase inhibitors.......
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Verifying what was already suspected to be the case "does not give rise to a patentable invention"
July 10, 2007
Post by Blog Staff
The Federal Circuit yesterday issued a split opinion dealing with contributory infringement and post-KSR obviousness. The case involved two patents regarding hematopoietic stem cells collected from blood in the umbilical cord after the birth of a child. Such cells have shown promise in the treatment of blood-related disorders. The Federal Circuit held that the patents were obvious because the inventor'.......
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Federal Circuit affirms findings of patent and copyright noninfringement
July 06, 2007
Post by Blog Staff
In a recent decision the Federal Circuit affirmed a district court's grant of summary judgment of noninfringement on one count of patent infringement and two counts of copyright infringement. The Federal Circuit also upheld the district court's denial of the plaintiff's Rule 60(b) motion seeking vacatur of the summary judgments. More details of Hutchins v. Zoll Med. Corp. after the jump.Hutchins al.......
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Equivalent can be "foreseeable" and thus barred under Festo even when equivalence unknown in the art
July 05, 2007
Post by Blog Staff
Today, the Federal Circuit rendered the latest decision in the nearly 20 year saga of Festo. The court refined the rules set forth by the Supreme Court in its Festo decision, specifically when an equivalent is unforeseeable, and thus not barred by prosecution history estoppel. The majority of the panel held that:an alternative is foreseeable if it is disclosed in the pertinent prior art in the field of the inve.......
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Examples in specification, file history implicitly redefine claim term; infringement affirmed
July 05, 2007
Post by Blog Staff
In a second case before the Federal Circuit in just over a month, competing avionics manufacturers Honeywell and Universal Avionics Systems were parties to a decision, this time with Honeywell coming out on top. The court affirmed the district court's claim construction of several terms in Honeywell's patent, which resulted in the court affirming the verdict of infringement.Notably, the court held tha.......
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Federal Circuit: test for obviousness of structurally similar compounds is unchanged post-KSR
June 29, 2007
Post by Blog Staff
At the Federal Circuit, it appears that everything old is new again. In a case applying the new obviousness framework from KSR to structurally similar chemical compounds, the court affirmed a district court decision that claimed compounds would not have been obvious in light of the prior art. The court lauded the district court's "extensive findings of fact and conclusions of law as to the four Graham .......
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Federal Circuit approves MPEP guidelines for written description rejections
June 28, 2007
Post by Blog Staff
The Federal Circuit addressed the standard applied by the USPTO for establishing a prima facie case of failure to meet the written description requirement in Hyatt v. Dudas today. The court found that compliance with MPEP § 2163.04(I)(B), by pointing out the nonexistence of support in the specification and identifying the claim limitation(s) at issue, is sufficient for an examiner to make out a prima facie.......
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"Attorney argument" and late disclosure not enough to support inequitable conduct finding
June 28, 2007
Post by Blog Staff
The Federal Circuit issued a ruling yesterday that provides some guidance on the issues of indefiniteness and inequitable conduct. The court held that the term "near" was sufficiently definite for identifying the location of an incision in veterinary surgery, because the meaning could be adduced from the intrinsic evidence. Further, the court held that as long as the examiner has time to consider a su.......
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Federal Circuit reverses claim construction and noninfringement finding
June 27, 2007
Post by Blog Staff
In a claim construction appeal, the Federal Circuit found that the doctrine of claim differentiation, combined with statements made in a petition to make special, led to a broader claim construction than that offered by the district court. Also, there was no unequivocal disclaimer of the broader claim scope during prosecution of either the patent-in-suit or its parent application, as found by the district court........
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Federal Circuit: less distinctive portions of a mark still considered in likelihood of confusion
June 22, 2007
Post by Blog Staff
In a case decided today, the Federal Circuit reversed the Trademark Trial and Appeal Board's denial of an opposition to registration of a trademark. Specifically, the court rejected the Board's finding that there was no likelihood of confusion because the Board improperly considered an element present in both marks a "weak component" of the competing marks and that other components of the mark.......
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Attorney's exclusion from USPTO practice based on ties to invention promotion firm affirmed
June 21, 2007
Post by Blog Staff
Unsuspecting inventors aren't the only ones hurt by fraudulent invention promotion firms. As a case decided today by the Federal Circuit shows, the attorneys they employ can also be harmed.Of course, in this case, the attorney isn't a very sympathetic figure. He was on the payroll of an invention promotion firm in the 1990s, and was paid up to $15,000 every two weeks to do the firm's patent prosecut.......
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Post-KSR: Expert testimony enough for infringer to avoid summary judgment of no invalidity?
June 19, 2007
Post by Blog Staff
In a nonprecedential ruling yesterday, the Federal Circuit reversed a district court's grant of summary judgment of no obviousness. The twist was that the only evidence in the record cited by the court as demonstrating a genuine issue of material fact was the testimony of the defendant's expert witness that there would have been a reason to modify the prior art in order to produce the claimed invention. .......
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Means-plus-function claim must recite some structure, "known equipment" not enough
June 18, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court's finding of invalidity of a several claims of a patent for indefiniteness under 35 U.S.C. § 112, ¶ 2. The patent specification did not describe a corresponding structure for the claim limitation "control means" as required by 35 U.S.C. § 112, ¶ 6, but instead stated that "known equipment" could be used.......
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Federal Circuit: no jurisdiction over contempt appeal, but dissolution of injunction affirmed
June 14, 2007
Post by Blog Staff
In a decision Wednesday, the Federal Circuit dismissed an appeal of a contempt order for lack of jurisdiction and ruled that the district court did not abuse its discretion in dissolving a preliminary injunction. The defendant was found in contempt of a preliminary injunction, but also found two new pieces of prior art that made out an invalidity case having substantial merit. The plaintiff failed to prove othe.......
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Federal Circuit finds disclosure not public use because invention not actually "used"
May 29, 2007
Post by Blog Staff
In a decision today, the Federal Circuit reversed a district court's finding of invalidity of two patents based on the public use bar of 35 U.S.C. § 102(b). A product capable of embodying the claimed inventions was disclosed to several individuals, including potential investors, before the critical date of the patents. The court nevertheless found no public use because the product, an ergonomic keyboar.......
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Federal Circuit addresses claim construction, on-sale and public use bars, and DJ jurisdiction
May 26, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit vacated in part a district court's claim construction of a several terms as well as its decision to find no infringement of patents owned by Honeywell. The court did, however, affirm the district court's retention of jurisdiction over the several withdrawn claims and the decision that Honeywell's pre-critical date activities were not barring sales or public u.......
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Federal Circuit affirms damage award to Monsanto against farmer who saved seed
May 24, 2007
Post by Blog Staff
In the latest in a series of appeals to the Federal Circuit, the court affirmed a jury's award of damages to Monsanto for infringement of patents relating to glyphosate resistant plants. The defendant, a farmer, had saved seeds from his crops from one growing season to the next in violation of the terms of the license granted by Monsanto to use the seeds. In previous appeals, the finding of liability for pa.......
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"Aspirina" descriptive of analgesic goods; denial of registration affirmed
May 24, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a decision by the TTAB that the term "ASPIRINA" is descriptive of analgesics, and therefore not subject to trademark protection in the United States absent a showing of secondary meaning. While the evidence of record was conflicting as to whether ASPIRINA was descriptive, given the deferential standard of review, the panel majority affirmed the decisio.......
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Federal Circuit affirms inequitable conduct finding, Judge Newman not happy about it
May 18, 2007
Post by Blog Staff
In a second opinion today, the Federal Circuit affirmed a district court's finding of inequitable conduct based on the nondisclosure of three pieces of information to the USPTO. The patentee had two similar pending applications at the USPTO, and in fact had cited the same prior art in both applications via information disclosure statements. In addition, a continuation-in-part (CIP) was filed based on the fi.......
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Federal Circuit reverses lost profits award and finding of personal liability
May 18, 2007
Post by Blog Staff
In a decision today, the Federal Circuit reversed a jury's award of damages based on lost profits as well as personal liability against the defendant corporation's principal. The district court let the issue of lost profits damages go to the jury, but the Federal Circuit determined that, as a matter of law, the court should not have let the jury decide the issue because there was insufficient evidence fo.......
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Proper successor shielded from patent infringement claim
May 16, 2007
Post by Blog Staff
In General Mills, Inc. v. Kraft Foods Global, Inc., the Federal Circuit affirmed the judgment of the district court holding that General Mills's claim for patent infringement against Kraft Foods was barred by a covenant not to sue that General Mills granted to Farley Candy Company, Kraft's predecessor in interest. In affirming the district court's decision, the Court held that Kraft, when it acquir.......
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Federal Circuit: Board can't use its own expertise as evidentiary substitute in interferences
May 15, 2007
Post by Blog Staff
The Federal Circuit today held that during inter partes proceedings, the Board of Patent Appeals and Interferences (the Board) cannot, under the Administrative Procedure Act (APA), rely on its own expertise when making factual findings if there is no evidence of record supporting its conclusion. The court did not opine whether this limitation extended to ex parte proceedings.The Board found that the senior par.......
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Inventors' appreciation of invention intones interference's inversion
May 11, 2007
Post by Blog Staff
On appeal from the Board of Patent Appeals and Interferences (BPAI), the Federal Circuit today reversed a priority determination, finding that the junior party had shown conception and reduction to practice before the senior party's filing date. As a result, the case was remanded to determine whether the senior party could prove earlier priority.More details of the case after the jump.The invention relates .......
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Federal Circuit post-KSR: Combination of familiar elements obvious when yielding predictable results
May 10, 2007
Post by Blog Staff
In this matter before the Federal Circuit, the Court affirmed the district court's grant of judgment that Fisher-Price's PowerTouch device did not infringe claim 25 of LeapFrog's U.S. Patent 5,813,861 ("the '861 patent") and that claim 25 of the '861 patent was invalid as obvious. Notably, the court cited the Supreme Court's KSR decision for the first time in a precedential.......
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Federal Circuit cites KSR, but not for the new obviousness standard
May 03, 2007
Post by Blog Staff
In a nonprecedential opinion released today, the Federal Circuit cited the Supreme Court's Monday decision in KSR for the first time. Unfortunately for inventors and practitioners looking for guidance under the new standard for obviousness laid out in KSR, the reference had nothing to do with the obviousness standard, just that obviousness is a question of law based on underlying factual information.More .......
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Federal Circuit issues short opinion on claim construction, even shorter mention of claim vitiation
May 02, 2007
Post by Blog Staff
The Federal Circuit today issued a brief, five-page opinion regarding claim construction and infringement issues relating to a patent on insulated shipping containers. The court affirmed the lower court's claim construction and, as a result, affirmed the summary judgment of noninfringement.The court also dispensed with the doctrine of equivalents in a single sentence, making indirect reference to claim vitia.......
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Same terms, same meanings, unless specification indicates otherwise
April 27, 2007
Post by Blog Staff
In an appeal by Porta Stor, Inc. of a judgment in favor of PODS, Inc. for, among other things, patent and copyright infringement, the Federal Circuit reversed the judgment of patent infringement finding no literal infringement and finding that infringement under the doctrine of equivalents was barred by prosecution history estoppel. The court also reversed the grant of judgment as a matter of law on copyright .......
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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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Federal Circuit Puts the Brakes on District Court's Claim Construction
April 19, 2007
Post by Blog Staff
The Federal Circuit today issued a fairly routine claim construction decision, vacating part of the district court's claim construction and remanding. The Court also affirmed the district court's decision to deny Rule 11 sanctions (applying Ninth Circuit law).More details of the case after the jump. Intamin Ltd. sued Magnetar Technologies Corp. for infringement of its patent relating to braking syste.......
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The Truth Be Told, "Lawyers" are Generic
April 13, 2007
Post by Blog Staff
The truth is finally out — "Lawyers" are generic. Really, "lawyers.com" is generic. In a case before the Federal Circuit, the Court affirmed the holding of the Trademark Trial and Appeal Board (TTAB) which denied registration of the mark LAWYERS.COM for providing an online interactive database featuring information exchange in the fields of law, legal news, and legal services as a gener.......
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Willful infringement affirmed; injunction vacated in light of eBay
April 13, 2007
Post by Blog Staff
The Federal Circuit affirmed a finding of willful infringement against a medical device manufacturer, but vacated a permanent injunction entered based on the old injunction standard to be reevaluated by the district court in light of the Supreme Court's decision in eBay v. MercExchange. The infringer obtained opinions of counsel regarding infringement at two different times. Initially.......
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Outdoor outfitters at odds over outerwear, order overturned
April 06, 2007
Post by Blog Staff
Competing sporting goods retailers Bass Pro Shops and Cabela's faced off in the Federal Circuit. The parties were involved in an earlier patent infringement suit where Bass Pro Shops sued Cabela's for infringing its patent relating to a vest with a "pivotable seat member." The parties settled that suit, and the court entered an order barring Cabela's from selling infringing garments durin.......
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Certificate of correction invalid, infringement case continues with original claims
April 04, 2007
Post by Blog Staff
The Federal Circuit yesterday voided a certificate of correction which had been issued changing the scope of a patent's claims. Because the error corrected broadened the claims and was not the type of error that was "immediately apparent and leave no doubt as to what the mistake is," the certificate of correction was inappropriate. As a result, the finding of infringement under the "corrected&.......
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Another post-MedImmune declaratory judgment jurisdiction decision
March 30, 2007
Post by Blog Staff
The Federal Circuit addressed the requirements for declaratory judgment jurisdiction in a published decision for the second time this week. This time the parties are pharmaceutical companies, but the result is the same: the lower court, applying the old "reasonable apprehension of suit" standard, found no jurisdiction, the Federal Circuit, applying a post-MedImmune standard reverses, finds that jurisdi.......
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Patent Term Extensions: A Leap Frog of Sorts to Set Expiration Date
March 30, 2007
Post by Blog Staff
In a case before the Federal Circuit, the court affirmed the district court's decision that a patent term extension under the Hatch-Waxman Act, 35 U.S.C. § 156, may be applied to a patent subject to a terminal disclaimer under 35 U.S.C. § 253. The Federal Circuit found that the language of § 156 is unambiguous and fulfills a purpose unrelated to and not in conflict with that of § 253. As .......
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Federal Circuit considers DJ jurisdiction post-MedImmune: Is an offer of license now enough?
March 26, 2007
Post by Blog Staff
In a very interesting opinion, the Federal Circuit today addressed what is required to support jurisdiction for a declaratory judgment by a party under threat of a possible patent infringement lawsuit. This is the first substantive discussion of the issue since the Supreme Court's decision in MedImmune, where the Court held that a patent licensee need not breach the license in order to challenge the validity .......
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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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Obviousness: A Primer by the Federal Circuit
March 22, 2007
Post by Blog Staff
In a case before the Federal Circuit, the district court's holding that a patent was valid and enforceable was rejected, not only because the Federal Circuit found the holding incorrect, but also because the holding reflected a serious misconception regarding the proper burden of proof each party bears in patent litigation. The Federal Circuit set forth a primer for an obviousness analysis in rejecting the .......
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Inequitable Conduct Found in False Statements and Deception
March 21, 2007
Post by Blog Staff
In a case before the Federal Circuit, the District Court's conclusion that Cantor's patent was unenforceable due to inequitable conduct was affirmed. The matter before the Court involved a patent for a method and system for trading financial instruments. Specifically, Cantor developed a system that would automate the trading process and avoid the use of "open outcry" and "trade capture processes." .......
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Equivalent not tangentially related to amendment, doctrine of equivalents unavailable
March 20, 2007
Post by Blog Staff
In a case coming before the Federal Circuit for the second time, the court reversed a finding of infringement under the doctrine of equivalents because of prosecution history estoppel. The court rejected the patentee's argument that the amendment was only tangentially related to the equivalent, thus the Festo presumption of surrender of equivalents was not rebutted, and not infringement was found. Judge Rade.......
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Decision to accept later filing date due to omitted items not correctable via reissue
March 19, 2007
Post by Blog Staff
When you make a conscious choice between alternatives during prosecution, the Federal Circuit says you're stuck with it. That's the message from In re Serenkin, where the court held that an inventor could not, through reissue, claim priority to his provisional filing. Serenkin had filed a PCT application just before the one-year anniversary of his provisional, but the PCT did not contain the drawings. He had to.......
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Federal Circuit Addresses Claim Differentiation
March 13, 2007
Post by Blog Staff
The Federal Circuit further clarified the doctrine of claim differentiation in Anderson Corp. v. Fiber Composites, LLC. Andersen Corp. owns a number of patent relating to composite materials made from a mixture of polymer and wood fiber as well as patents that relate to structural parts made from those composite materials. Fiber Composites manufactures and sells deck railing and spindle products under the trade .......
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Federal Circuit again deals with standing
March 02, 2007
Post by Blog Staff
In yet another case, the Federal Circuit has dealt with whether a party asserting a patent infringement claim had title to the patent, and thus standing to bring the claim against the defendant. Here, once the standing issue was raised at the district court, the Plaintiff opted to fix the chain of title, voluntarily dismiss its claim, and refile a new case against the defendant. The court granted the dismissal (.......
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Today's lesson from the Federal Circuit (that you should already know): Don't miss deadlines
February 27, 2007
Post by Blog Staff
In a case decided today, the Federal Circuit affirmed the TTAB's dismissal of a party's cancellation claim. The party seeking cancellation sought to do so by proving uncontrolled licensing of the trademark, but failed to file a notice of reliance with regard to the relevant testimony on the issue before the deadline. The TTAB denied the motion to reopen the testimony period, finding no excusable neglect. The Fe.......
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Comparison of Commercial Products not the vehicle to analyze equivalence
February 27, 2007
Post by Blog Staff
In a second appearance before the Federal Circuit, AquaTex again appealed a decision of the District Court that Techniche Solutions' Cooling Apparel did not infringe their U.S. Patent No. 6,371,977 for a protective multi-layered liquid retaining composition. The Federal Circuit had previously affirmed the lower court's finding of no literal infringement while remanding the case back to the District Court for furt.......
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Back to the Future: trade dress found functional in 1985 still functional in 2007
February 27, 2007
Post by Blog Staff
The Federal Circuit once again rejected Bose Corporation's application to register a speaker design as a trademark. The court had earlier affirmed a finding of functionality by the USPTO, and because there were no changed circumstances since that decision, the court once again affirmed the same finding based on the doctrine of res judicata (claim preclusion). More details of the case after the jump. Bose sta.......
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Voluntary dismissal prevents award of attorney fees under § 285
February 27, 2007
Post by Blog Staff
In a recent case, the Federal Circuit found that when a plaintiff voluntarily dismisses its case under Rule 41(a)(1)(i) before an answer is served, the defendant is not a "prevailing party." As a result, attorney fees under § 285 could not be awarded by the district court. More details of the case after the jump. RFR Industries holds two patents directed toward railroad crossing fillers, .......
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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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Government contractor entitled to patent infringement immunity
February 21, 2007
Post by Blog Staff
The Federal Circuit ruled today that a contractor working for the government was entitled to immunity from a patent infringement suit under 28 U.S.C. § 1498(a). The contractor was hired to clean up various sites contaminated by hazardous waste, and the terms of the contract required the contractor to use a particular method to perform the cleanup. This method was patented, and the patent holder sued. The F.......
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Don't change horses in midstream: Patentee held to claim construction position taken at lower court
February 20, 2007
Post by Blog Staff
The Federal Circuit ruled today that a patentee could not argue a different claim construction than that argued before the district court. Because of this, the court affirmed the lower court's grant of summary judgment of noninfringement against the patent holder. Also, the court held that the patent holder did have standing to bring the case. Issues relating to the chain of title of a patent are .......
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Federal Circuit accepts rare interlocutory claim construction appeal
February 14, 2007
Post by Blog Staff
Today the Federal Circuit accepted an interlocutory appeal from a district court relating to patent claim construction. Because of the rarity of such a decision by the Federal Circuit, the court felt compelled to explain, in a precedential order, why it was accepting the order, and so members of the bar wouldn't get their hopes up that the court will be accepting more interlocutory appeals on claim construction i.......
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Dippin' Dots: brought to you by inequitable conduct, but not an antitrust violation
February 09, 2007
Post by Blog Staff
What do Dippin' Dots, the little beads of ice cream sold at fairs, stadiums, and malls, have to do with patent and antitrust law? For the Federal Circuit, they presented the "close case" where a patent holder can be found to have engaged in inequitable conduct during prosecution of the patent but is not liable for a Walker Process antitrust claim by an infringement defendant. This is possib.......
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Jurisdiction over Foreign Patents Requires - 1367(c) Analysis
February 02, 2007
Post by Blog Staff
The question before the Federal Circuit in Jan K. Voda, M.D. v. Cordis Corporation was whether where an accused infringer is shown to have moved its infringing activities offshore to Germany, the U.K. and elsewhere, does supplemental jurisdiction of the court, pursuant to 28 U.S.C. ? 1367, permit an infringement determination under the parallel foreign patents, where all patents originate from a single Patent Coo.......
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Federal Circuit again dismisses patent case for lack of standing
January 30, 2007
Post by Blog Staff
The Federal Circuit has once again found the plaintiff in a patent infringement lawsuit did not have standing to bring its infringement claim. In order for a single plaintiff to have standing to assert infringement of a patent, that plaintiff must be the owner of the entire interest in the patent. As succinctly stated by the court: "Absent the voluntary joinder of all co-owners of the patent, a co-owner ac.......
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Federal Circuit Places Members of the Bar on Notice
January 29, 2007
Post by Blog Staff
It's not over until it's over. In International Electronic Technology Corp. v. Hughes Aircraft Company, DirecTV, Inc. and Thomson Consumer Electronics, Inc., the Federal Circuit dismissed International Electronic's appeal for lack of jurisdiction. In its ruling, the Federal Circuit stated: "The court takes umbrage at parties who have not carefully screened their cases to ascertai.......
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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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Walker Process antitrust claim reinstated: threats to sue competitor's customers sufficient
January 26, 2007
Post by Blog Staff
In Hydril Co. v. Grant Prideco, Inc., the Federal Circuit reinstated a Walker Process antitrust claim the lower court had dismissed. A Walker Process claim can arise when a patent holder, knowing that its patent was obtained through fraud, still attempts to enforce the patent. This type of claim is named after the Supreme Court case where it was first described as a valid claim under United States antitrust laws.......
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University Can't Have Its Cake and Eat It Too - Immunity Negated
January 25, 2007
Post by Blog Staff
The University of Missouri's waived its constitutional immunity under the Eleventh Amendment when it fully participated in an interference action against Vas-Cath, Inc. A Vas-Cath patent had issued while the University's application, although filed before the Vas-Cath application, was still pending. The University invoked the procedures to institute an interference between the University's pending .......
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"Critical" ratio in claim does not get the benefit of the doctrine of equivalents
January 19, 2007
Post by Blog Staff
Today's lesson from the Federal Circuit: be careful not to make a claim limitation "critical," or you may lose the benefit of the doctrine of equivalents for that element. The court found that the claimed weight ratio of two drugs was critical in part because other claims recited a range of ratios, but the claim at issue simply recited a specific ratio, "about 1:5." The court stated that permitting infringement.......
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Appeals Court holds Transclean Corporation to its stated position
January 18, 2007
Post by Blog Staff
The United States Court of Appeals for the Federal Circuit decided in Transclean v. Jiffy Lube that Transclean should be bound by its repeated statements proffered during the course of litigation and not be allowed to take a contrary position during a second phase of litigation. Transclean is the sole licensee of U.S. Patent No. 5,318,080 that is directed to an apparatus for changing automatic transmission fluid........
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Limitations of a Claim Come from the Claim Language Itself
January 12, 2007
Post by Blog Staff
In E-Pass Technologies ("E-Pass") v. 3Com Corp., Palm Inc., palmOne, Inc. and Handspring, Inc. and Visa International Service Association and Visa U.S.A., Inc. and Palmsource, Inc. ("3Com"), the district court's holding of final summary judgment of non-infringement by 3Com was affirmed by the Federal Circuit. At issue was a patent ("the '311 patent") entitled "Method and Device for Simplifying th.......
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"Use in commerce" not necessary to support trademark opposition, just use in the United States
January 09, 2007
Post by Blog Staff
The Federal Circuit, reversing the Trademark Trial and Appeal Board ("TTAB"), found that a Canadian company who arguably only did business in Canada could oppose a trademark application based on "spillover" use of its unregistered trademark in the United States. The Canadian company, First Niagara Insurance Brokers, opposed several trademark applications filed by a United States company, First.......
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"Bare Licensee" Lacks Standing to Sue for Infringement
January 09, 2007
Post by Blog Staff
In Propat International Corp & David Find and Helene Glasser ("Propat") v. RPsot International Limted, Zafar Khan, Kenneth Barton and Terrance Tomkow ("Rpost"), the Federal Circuit affirmed the district court's decision that Propat lacked standing to sue for infringement and, on the cross-appeal, affirmed the district court's order denying RPost's request for an award of fees and costs. At issue wa.......
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Another claim construction reversal: Claim not limited to preferred embodiment
December 29, 2006
Post by Blog Staff
In a split decision, the Federal Circuit reversed a district court's judgment of noninfringement based on error in claim construction. The patent at issue involves a machine and method that automate the staining of microscope slides used in biological assays. The district court construed the claims narrowly based on the preferred embodiment described in the patent's specification. Based on this construction, th.......
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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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Speak Now or Forever Hold Your Peace - Failure to Raise Verdict Inconsistency Defeats Appeal
December 14, 2006
Post by Blog Staff
In L&W, Inc. v. Shertech, Inc. and Steven W. Sheridan ("Shertech"), the Court affirmed in part the decision of the US District Court for the Eastern District of Michigan holding claim 7 valid and claim 10 invalid of Shertech's '264 patent, and affirming the portion of the judgment holding that the '264 patent was not unenforceable due to inequitable conduct. At issue was a patent ("the '265 paten.......
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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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Court Applied Four-Factor Test for Preliminary Injunction Relief
December 13, 2006
Post by Blog Staff
In Sanofi v. Apotex (Sanofi-Synthelabo, Sanofi-Synthelabo,Inc., and Bristol-Myers Squibb Sanofi Pharmaceuticals Holding Partnership v. Apotex, Inc. and Apotex Corp.), the Court affirmed the decision granted by the US District Court for the Southern District of New York granting a preliminary injunction in favor of Sanofi. At issue was a patent ("the '265 patent") for an active ingredient "clopidog.......
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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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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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Showing a strong Spine, the Federal Circuit addresses the Doctrine of Equivalents
November 21, 2006
Post by Blog Staff
In DuPuy Spin, Inc. v. Medtronic Sofamor Danek, Inc., the Federal Circuit concluded that the district court erred in granting summary judgment of non-infringement on Medtronics Vertex? model with regards to U.S. Patent No. 5,207,678 (the '678 patent). Additionally, the Federal Circuit concluded that the district court's judgment of non-infringement for Medtronics bottom-loaded screw device was proper and that the.......
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Analysis of overall appearance determines whether patented design is dictated by function
November 19, 2006
Post by Blog Staff
In PHG Technologies, LLC v. St. John Companies, Inc., the Federal Circuit vacated the preliminary injunction of the district court finding St. John raised a substantial questions of validity of the two patents-at-issue.At issue were two design patents owned by PHG: the '405 and '197 patents. The '405 and '197 patents depend from a utility patent for patient identification labels.......
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02 Micro takes strike three
November 16, 2006
Post by Blog Staff
02 Micro International Limited and 02 Micro, Inc. (collectively "02 Micro") recently appealed a Northern District of California district court's grant of summary judgment of non-infringement in favor of Monolithic Power Systems, Inc. ("MPS") to the United States Court of Appeals for the Federal Circuit. 02 Micro contended that the district court errored in denying it leave to amend its infringement contentions an.......
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Two patents held obvious, "no question" that motivation to combine references existed
November 16, 2006
Post by Blog Staff
Optivus Technology sued Ion Beam Applications (IBA) for infringing its patents relating to the use of proton beams in cancer therapy, and specifically to proton beam therapy facilities with multiple treatment rooms using the same proton source. In addition to patent infringement, Optivus also claimed violations of California and Florida unfair competition laws and a Lanham Act "false statement" claim. The distri.......
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Federal Circuit reverses claim construction but affirms infringement
November 16, 2006
Post by Blog Staff
Abraxis Bioscience (formerly AstraZeneca) is the holder of three patents on an improved formulation of an anesthetic, DIPRIVAN?. Prior formulations had the problem of increasing postoperative infections. The inventors discovered that by adding disodium edetate as an antimicrobial agent. This addition allowed DIPRIVAN? to be administered for up to 24 hours without a significant increased risk of infection. .......
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Federal Circuit issues two decisions regarding reissue patents
November 14, 2006
Post by Blog Staff
Over the course of three court days, the Federal Circuit issued two decisions in cases involving reissue patents. After a patent is issued, if the patent holder discovers that the patent is "wholly or partly inoperative or invalid," the patentee may surrender the original patent and seek reissue of the patent. If this is sought within the first two years after the original patent issued, the claims may be broade.......
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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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