Federal Circuit determines that method for optimizing dosing of medication is patent eligible The Federal Circuit on Friday looked at the issue of what constitutes an attempt to patent a natural phenomenon. In Prometheus Laboratories, Inc. v. Mayo Collaborative Services, the Federal Circuit determined that a method for optimizing the dosage of a medication was not directed to a natural phenomenon and therefore was patent-eligible subject matter within […] Continue Reading →
Inventor’s prior art patents and prosecution history lead to reversal of claim construction In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of noninfringement and invalidity based on inadequate written description. The issue of infringement was reversed based on the district court's incorrect construction of a critical claim limitation. While the court held it was a "close case," it held the patentee […] Continue Reading →
Compliance with industry standards can be used to show patent infringement In Fujitsu et al v. Netgear, the Federal Circuit held compliance with an industry standard can be sufficient evidence to establish patent infringement. However, this rule only applies when the only way to adhere to the industry standard is to infringe the asserted patent, such that any product that complies with the standard infringes. In […] Continue Reading →
Federal Circuit decisions address false marking statute in Solo Cup and Brooks Brothers cases The Federal Circuit continues to address false marking cases. The court's recent decisions stress how important it is for patentees to monitor and update their labeling and other marking activities, particularly as patents expire. In June, the court affirmed a summary judgment decision in favor of Solo Cup related to the company's practice of marking […] Continue Reading →
Preamble held not limiting because body of claim sets forth complete invention In a recent decision, the Federal Circuit reversed a decision of the United States District Court for the District of Massachusetts. The district court had granted summary judgment of noninfringement to the defendant finding that the defendant's accused device did not perform a function found only in the preambles of the asserted claims.The Federal Circuit […] Continue Reading →
Another issue headed for en banc review by the Federal Circuit: How to assess redesigned products In an order Friday, the Federal Circuit granted en banc review of its second case in the past three weeks and its third over the past three months. This time it's a case involving Tivo relating to the contempt proceedings against Echostar relating to Tivo's DVR patents. After Echostar was found to infringe Tivo's patent […] Continue Reading →
Federal Circuit to consider overhaul of inequitable conduct standards en banc In an order today, the Federal Circuit granted rehearing en banc in Therasense, Inc. v. Becton, Dickinson & Co. The order indicates the court will be reconsidering its precedent on virtually the entire gamut of issues relating to inequitable conduct. Specifically, the questions presented are: Should the materiality-intent-balancing framework for inequitable conduct be modified or […] Continue Reading →
En banc Federal Circuit reaffirms written description requirement is separate from enablement Monday the Federal Circuit released its en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lily & Co., where the court addressed whether 35 U.S.C. § 112 has a written description requirement separate and apart from the enablement requirement. A substantial majority of the court (10 judges) joined in the majority opinion, with two judges […] Continue Reading →
False marking applies on a per article basis, not a per decision to mark basis In Forest Group v. Bon Tool Co., the Federal Circuit held that the false marking statute applies on a per article basis, rather than on a per decision to mark basis. The Federal Circuit reversed the district court, which had imposed a fine of $500 for a single decision to falsely mark a shipment of […] Continue Reading →
Federal Circuit to consider en banc whether new evidence may be introduced in a section 145 action In an order yesterday, the Federal Circuit has agreed to consider the scope of evidence to be considered in an action filed under 35 U.S.C. § 145 to obtain review of a decision of the Board of Patent Appeals and Interferences. The case is Hyatt v. Kappos. Specifically, the court ordered briefing on the following […] Continue Reading →