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Attendance at single trade show to display infringing product sufficient for personal jurisdiciton

In a case of first impression for the Federal Circuit, the court addressed the issue of how to apply Federal Rule 4(k)(2) (the Federal Court's long-arm statute) to a defendant. The court, in agreement with several other circuits, that a Rule 4(k)(2) analysis is appropriate when (1) the plaintiff's claim arises under federal law, (2) […]

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En banc Federal Circuit to address potential patent misuse issues in license practices

The Federal Circuit has agreed to hear en banc an interesting issue with regard to the potential for patent misuse in licensing. The case is Princo Corp. v. ITC. At issue is the patent pool related to the technology used for CD-R and CD-RW discs. The alleged infringer, Princo, admitted infringement before the ITC, but […]

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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 […]

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Claim and continuation rules dead: thousands of practitioners breathe easier

In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations. This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued. The summary of the notice: The United States Patent and Trademark Office (Office) […]

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Manuscript filed with copyright office not necessarily publicly available as of filing date

In a decision Tuesday, the Federal Circuit held the USPTO had not provided sufficient evidence that an inventor's manuscript was publicly accessible, and therefore available as prior art under § 102(b), before the critical date of the application. As a result, the court reversed the Board of Patent Appeals and Interferences. At issue was the […]

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Federal Circuit to consider whether a separate written description requirement exists in section 112

In an en banc order Friday, the Federal Circuit announced it will rehear Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. en banc to consider whether there is a written description requirement in § 112 separate and apart from the enablement requirement. Specifically, the questions presented are: Whether 35 U.S.C. § 112, paragraph 1, contains […]

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Federal Circuit to hear claim and continuation rule case en banc

In an order this afternoon, the Federal Circuit agreed to hear en banc Tafas v. Doll, the case challenging the USPTO's claim and continuation rules. Back in March, a panel of the court held, in a 2-1 decision, the limits on continuation applications were invalid, but the remainder of the rules were not invalid, at […]

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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 […]

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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 […]

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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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