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Close but no cigar: ITC gets 4 of 5 claim constructions correct, but must reconsider 2 issues

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 […]

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Estoppel applies to all added limitations in claims, including when present in unamended claims

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 […]

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Combining two embodiments in same prior art patent “does not require a leap of inventiveness”

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 […]

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Today’s prosecution practice tip: don’t use the phrase “the present invention” in the specification

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 […]

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Use of “mechanism” in claim without more may result in means-plus-function interpretation

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 […]

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District court’s order dismissing the action with prejudice held to be nonfinal due to counterclaims

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 […]

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Substantial question regarding validity insufficient to defeat likelihood of success?

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 […]

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High materiality without explanation for nondisclosure leads to inference of intent to deceive

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 […]

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Anticipation no longer the epitome of obviousness? Claims can be anticipated but nonobvious

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 […]

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Inducement not shown when accused product can work in an infringing way but doesn’t have to

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 […]

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