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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 […]

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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 […]

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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 […]

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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 […]

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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 […]

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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 […]

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Developments up to second-filed application relevant to show no double patenting

The Federal Circuit has clarified the relevant timeframe for purposes of determining whether two claimed inventions are patentably distinct or would result in impermissible double patenting. The court held "the relevant time frame for determining whether a product and process are 'patentably distinct' should be at the filing date of the secondary application." Here, the […]

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If there are no sources of proof in the Eastern District of Texas, expect to be transferred

After the Fifth Circuit's Volkswagen and the Federal Circuit's TS Tech decisions, potential patent plaintiffs should be getting the message: Don't file in the Eastern District of Texas unless there are actually some sources of proof there. The Federal Circuit has again granted mandamus ordering the district court to transfer another case out of the […]

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Are patent holding companies subject to different DJ jurisdiction standards than others?

According to the Federal Circuit, the answer to this question appears to be "yes." The court reversed a district court's dismissal of a declaratory judgment action against a patent holding company (or non-practicing entity (NPE), sometimes pejoratively referred to as a patent troll). The DJ action was predicated on three letters, the first from the […]

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Common sense held sufficient to invalidate claims as obvious on summary judgment

If anyone needed further proof that patents are more easily held obvious after KSR, look no further. The Federal Circuit held that a patent directed to a method of email marketing with improved efficiency was obvious based on the "common sense" of one in the art. The claimed method had four steps, the fourth of […]

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