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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In license agreement, right to “have made” implicitly granted with right to make

In a recent decision, the Federal Circuit affirmed a district court's dismissal of a patent licensor's claims for breach of a license agreement and patent infringement. The non-exclusive licensee arranged to have third parties manufacture the licensed product, but the product was sold by the licensee. The patent owner argued this was a breach of […]

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Insufficient enforcement activity in district by patentee leads to dismissal of DJ action

In a decision Monday, the Federal Circuit affirmed a district court's dismissal of a declaratory judgment action against a British patentee for lack of personal jurisdiction. The facts of the case are similar to the Avocent case decided a few months ago. Here, the patentee's only contacts with the district in which the action was […]

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Patentee’s commercial sales not relevant for personal jurisdiction in DJ action

In a decision addressing personal jurisdiction in declaratory judgment actions, the Federal Circuit affirmed a district court's dismissal of an action against a foreign patent owner. The plaintiff sought a declaration that two patents owned by a Taiwanese company were invalid and not infringed in the plaintiff's home forum, the Northern District of Alabama. The […]

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When compounds in a class have divergent properties, positional isomer not obvious

In a decision Wednesday, the Federal Circuit affirmed a district court's determination that the asserted claims in a pharmaceutical patent were not proven obvious. As is common in pharmaceutical cases, the defendant filed an ANDA asserting the patent covering the compound and its use was invalid, and in the ensuing infringement suit admitted its proposed […]

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Marketing methods not patentable subject matter: no machine or transformation

In a recent decision, the Federal Circuit applied the machine-or-transformation test from Bilski to affirm the rejection of all pending claims in a patent application by the Board of Patent Appeals and Interferences. The claims at issue related to methods of marketing products and "paradigms" for marketing software. The Board held all claims were not […]

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Use of court-appointed expert not abuse of discretion, even when jury told of neutrality

In a recent decision, the Federal Circuit held it was not an abuse of discretion for a district court to retain an independent expert pursuant to Rule 706 to assist the jury in understanding the technology relating to a complicated electrical patent. The district court was frustrated with the technology, and observed "the notion that […]

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