Elements of infringement claim not jurisdictional; “sale” occurs at location of buyer and seller

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 […]

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Quality of investigation irrelevant to whether claims objectively baseless

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, and trade […]

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Two district courts, one correct claim construction; $103 million damage award vacated

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 […]

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Supreme Court asks for government’s view on whether it should hear sovereign immunity waiver case

In an order yesterday, the Supreme Court asked the Solicitor General's office to file a brief providing the government's views on whether it should grant certiorari in Biomedical Patent Management Corp. v. California Department of Health Services (No. 07-956). We previously blogged about the Federal Circuit's decision in this post. The case deals with whether […]

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Covenant not to sue insufficient to defeat DJ jursidiction because of Hatch-Waxman issues

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 […]

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Patentee could not rebut presumption of estoppel; noninfringement finding affirmed

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 […]

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License under method patent not limited to use with licensor’s products absent express limitation

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 […]

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Assignee of patent not bound by previous assignee’s agreement to arbitrate

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, […]

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Party defaulting before district court and enjoined cannot attack registration via cancellation

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 […]

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Preamble not limiting when duplicative of claim limitations and not added to overcome rejection

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. […]

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