Dependent claim can’t be obvious when indepdendent claim is not; verdict vacated as inconsistent In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness. The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness: the jury held a dependent claim obvious but […] Continue Reading →
Three disputed claim terms, three revised constructions, one remand In a recent decision, the Federal Circuit vacated and remanded a district court's judgment of noninfringement based on the parties' stipulation after claim construction. The district court construed three claim terms in a way that the parties agreed rendered all accused products noninfringing, and the plaintiff appealed.On appeal, the Federal Circuit reversed the district court's […] Continue Reading →
When analyzing written description in interference, claims construed according to patent copied from In a recent decision, the Federal Circuit reversed a district court’s grant of summary judgment in a ยง 146action brought after an interference proceeding at the USPTO. The district court agreed with the Board’s decision to award priority to the senior party in the interference, granting the senior party’s motion for summary judgment that its […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →