Grant of stay while preliminary injunction motion pending abuse of discretion 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 […] Continue Reading →
On appeal, BPAI cannot group claims that do not share a common reason for rejection 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. […] Continue Reading →
Claim construction from different case against different defendant applies in subsequent case 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 […] Continue Reading →
New appeallate counsel insufficient reason to consider arguments not raised before district court 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 […] Continue Reading →
Request to stay injunction pending appeal may also be considered notice of appeal; estoppel bars DOE 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 […] Continue Reading →
Mandamus inappropriate unless no other way to get relief, even if result is unnecessary trial 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 […] Continue Reading →
When market entry fee part of damages for patent infringement, permanent injunction inappropriate 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 […] Continue Reading →
Fourth Circuit: Subpoena to foreign corporation valid even though no U.S. business contacts The Fourth Circuit last week addressed a district court's ability to issue subpoenas to foreign witnesses in USPTO administrative proceedings. The court held that a district court may issue a Rule 30(b)(6) subpoena to a foreign corporation who is party to an opposition, even if the party has no officers, directors or managing agents who […] Continue Reading →
Allegedly false statements insufficient to warrant setting aside judgment under Rule 60(b)(3) 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 […] Continue Reading →
Plaintiff successfully skirts the minimum requirements for pleading, dismissal of complaint reversed 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 […] Continue Reading →