Patentee need not join in appeal for exclusive licensee to retain standing 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 […] Continue Reading →
Contempt proceedings proper, but filing ANDA not within scope of injunction, so no contempt 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 […] Continue Reading →
Agreement to “submit to jurisdiction” is waiver of 11th Amendment immunity by state university 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 […] Continue Reading →
Another lawsuit filed to stop implementation of new USPTO rules, this time by a heavy hitter Pharmaceutical giant GlaxoSmithKline filed a lawsuit in the Eastern District of Virginia seeking to stop implementation of the new continuation and claim limit rules. The lawsuit, filed Tuesday, seeks a preliminary and permanent injunction against the rules' implementation. The complaint has eight counts: The Rules are ultra vires because the USPTO does not have the […] Continue Reading →
Five things not to do when prosecuting patent applications 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 […] Continue Reading →
USPTO gives applicants a bit of a break during transition to new continuation and claim limit rules In an announcement yesterday, the USPTO clarified some aspects of the new continuation and claim limit rules. Of particular note are the following: For applications filed before November 1, 2007, applicants need not identify all applications and patents having a common inventor, common assignee, and a priority date within two months. Applicants will still have […] Continue Reading →
USPTO publishes post-KSR obviousness examination guidelines The USPTO guidelines for obviousness rejections post-KSR appear in today's Federal Register. The full guidelines can be found here, and are similar to the draft guidelines that surfaced some time ago. In a nutshell, examiners will officially have seven rationales upon which an obviousness rejection may rely: Combining prior art elements according to known methods […] Continue Reading →
Are the new continuation and claim limit rules the “cure all” for the USPTO? It looks like the USPTO is hoping that the new rules limiting the number of claims and continuation applications will solve its problems in other areas, particularly examiner retention. Last week, the Government Accountability Office (GAO) issued a report entitled "U.S. Patent and Trademark Office: Hiring Efforts Are Not Sufficient to Reduce the Patent Application […] Continue Reading →
Second Circuit: retroactive assignment cannot cure past infringement claim by co-author The Second Circuit yesterday issued a decision regarding whether an action for infringement brought by one co-author of a song can be defeated by the grant of a "retroactive" transfer of ownership to the infringer from a co-author who is not party to the infringement action. The case involved licensing and litigation regarding authorship of […] Continue Reading →
The clear target of the new continuation and claim limit rules: Thomas Edison This was received over email today. While we have not verified the information, it shows that the new rules arguably do not "Promote the Progress of Science and Useful Arts." THANK GOODNESS FOR COMMISSIONER DUDAS AND HIS NEW RULESBefore the new rules, one New Jersey inventor amassed 394 patents with more than 5 independent claims, […] Continue Reading →