Finding of inequitable conduct affirmed, Judge Rader expresses concern over resurgence of defense 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 […] Continue Reading →
No claim preclusion unless second accused product essentially the same as product in first suit 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 […] Continue Reading →
Claim construction and noninfringement affirmed on one patent, vacated on another 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 […] Continue Reading →
Claim term construed by construing different term in specification deleted from claim 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 […] Continue Reading →
Hybrid vehicle patent not infringed; invalidity issues need not be reached on appeal from ITC 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 […] Continue Reading →
District court’s claim construction too narrow, but noninfringement finding affirmed anyway 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. […] Continue Reading →
USPTO files notice of appeal in claim and continuation rules case As expected, this morning the USPTO filed a notice of appeal to the Federal Circuit in the lawsuit challenging its new claim and continuation rules. The USPTO will seek reversal of the district court's order finding the new rules exceeded the USPTO's rulemaking authority. We'll continue to monitor the case as it proceeds through briefing […] Continue Reading →
Thursday at the Federal Circuit: In re Bilski oral arguments on scope of patentable subject matter 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 […] Continue Reading →
What’s new at the USPTO: Markush rules comments, new PPH, and pre-first action interview pilot There have been a few new things relevant to the USPTO in the past couple of weeks that we haven't had a chance to talk about. They include more comments regarding the proposed rules regarding Markush claims, a new Patent Prosecution Highway with the European Patent Office, and a pilot program where patent applicants would […] Continue Reading →
Offer of judgment providing full recovery mooted case, preventing opinion regarding spoliation 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 […] Continue Reading →