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 →
Disclosure of compounds without link to claimed method fails to meet written description requirement In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law after a jury determined the asserted claims of an invention were not invalid under the written description requirement. The court, however, affirmed the district court's determination of no inequitable conduct.The Federal Circuit held the jury lacked […] Continue Reading →
Sales of products by party under unconditional covenant not to sue exhaust patent rights In a decision Wednesday, the Federal Circuit affirmed a district court's finding that a patentee's claims for patent infringement were barred by patent exhaustion in view of a settlement agreement between the patentee and a previous defendant in an infringement suit. The patentee previously sued a third party, and the suit was resolved by a […] Continue Reading →
Nondisclosure of test results disclosed to testifying expert results in sanctions, but not dismissal In a recent decision, the Federal Circuit affirmed-in-part and reversed-in-part a district court's ruling sanctioning the plaintiffs and their attorney in a case both monetarily and by striking the plaintiffs' pleadings. The sanctionable conduct was the withholding of certain test results of the allegedly infringing product that arguably showed the product did not infringe. The […] Continue Reading →
Board’s determination of priority, while “very close call,” supported by substantial evidence In a recent decision, the Federal Circuit affirmed a decision of the Board of Patent Appeals and Interferences awarding priority of invention to the senior party in an interference proceeding. The Board held there was sufficient corroborating evidence of an inventor's testimony that the senior party appreciated its reduction to practice worked and met the […] Continue Reading →
Kubin decided: Federal Circuit provides guidance for application of KSR in biotechnology Today the Federal Circuit decided the appeal in In re Kubin, a case dealing with how the Supreme Court's KSR decision will apply in the field of biotechnology. The decision is available here. We previously blogged about the BPAI decision here and the Federal Circuit's oral arguments here. Those posts have detailed descriptions of the […] Continue Reading →
Public use can’t be experimental if not for purposes of the patent application In a decision last week, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity of a patent and summary judgment to the defendant on the Plaintiff's false advertising claims. The defendant asserted the patent was invalid as obvious and by virtue of a prior public use. The district court held a […] Continue Reading →
Today’s Federal Circuit practice tip: don’t misrepresent the record or the law In a recent decision, the Federal Circuit awarded sanctions against the plaintiff-appellant for filing and pursuing a frivolous appeal against one of four defendant-appellees. The court observed the plaintiff-appellant failed to explain how the district court erred in its determination that this defendant did not infringe and also made misrepresentations of the record and law […] 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 →
Summary judgment of validity reversed; predictable variation of prior art obvious as a matter of law In a decision last month, the Federal Circuit reversed a district court's summary judgment to the plaintiff. The district court had awarded damages after granting summary judgment of "validity" and infringement. While the Federal Circuit agreed with the district court's construction of a disputed claim term, the court held the asserted claims were obvious as […] Continue Reading →