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Patent lawyer without expertise in relevant field cannot testify on infringement, invalidity

The Federal Circuit recently reversed a district court's post-verdict grant of judgment as a matter of law of nonobviousness, applying the KSR obviousness standard and addressing the requirements for expert testimony for legal conclusions of obviousness. The Federal Circuit clearly set forth that patent attorneys without specific skill and training in the area of the […]

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Prior art disclosure of compound does not anticipate substantially separated enantiomer

In a recent decision, the Federal Circuit affirmed a district court's determination, after a bench trial, that the asserted claim of a patent had not been proven anticipated or obvious. The district court held that while the prior art showed the chemical structure of the claimed compound, it did not describe the separation of the […]

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Failure to disclose patents to SSO results in unenforceabilty against products using standard

In a recent decision, the Federal Circuit affirmed-in-part a district court decision that a patentee had breached a duty to disclose relevant video-compression technology patents while participating in a joint video team standards-setting organization (SSO). The Federal Circuit, however, reversed in part the district court decision finding the patents unenforceable against the world, instead holding […]

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Reliance on initial expert for rebuttal sufficient to defeat summary judgment

In a decision Tuesday, the Federal Circuit reversed grants of summary judgment in favor of both parties. The defendant was granted summary judgment of noninfringement, and the plaintiff (and counterclaim defendant) was granted summary judgment on the grounds of no marking under 35 U.S.C. § 287. Both parties appealed. The Federal Circuit determined there was […]

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Continuation rules appeal decided; continuation limit invalid; RCE limit and ESD requirements valid

This morning the Federal Circuit released its opinion in Tafas v. Doll (formerly Tafas v. Dudas), the case addressing the validity of the USPTO's claim and continuation rules. The court holds all of the rules at issue are procedural rather than substantive, reversing the district court on this issue. In spite of this conclusion, the […]

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Explanation of prior art element in dependent claim insufficient to confer inventor status

In a decision Thursday, the Federal Circuit reversed a summary judgment of dismissal for lack of standing by the District Court for the Eastern District of Michigan. The district court held that one of the defendant's employees was a coinventor of the patent-in-suit, and because he had not joined as a plaintiff, the plaintiffs did […]

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Claim that infringing product was defendant’s “innovation” cannot support section 43(a) claim

In a decision last month, the Federal Circuit reversed a district court's denial of judgment as a matter of law from a jury award of $8,054,579 under § 43(a) of the Lanham Act. The plaintiff held a patent on a type of basketball, and the defendant (against whom summary judgment of infringement was granted) advertised […]

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Failure to raise KSR post-trial but pre-judgment results in waiver

In a recent decision, the Federal Circuit affirmed a jury's verdict of infringement, no obviousness, and no inequitable conduct. On appeal, the defendant for the first time argued the jury's verdict should be reversed in light of KSR. The Federal Circuit held the argument had been waived. The jury reached its verdict on December 8, […]

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Covenant to sue that does not cover future infringement insufficient to defeat DJ jurisdiction

In a recent decision, the Federal Circuit reversed a district court's dismissal for lack of declaratory judgment jurisdiction over a defendant's counterclaims for non-infringement, invalidity, and unenforceability of a patent. The plaintiff brought suit against the defendant for infringement in 2003, and on the eve of trial on the issues of invalidity and unenforceability, offered […]

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United States did not waive immunity for copyright infringement claim brought by prisoner

In a recent decision, the Federal Circuit held the Court of Federal Claims correctly dismissed a copyright infringement suit against the United States for lack of subject matter jurisdiction. The plaintiff is a federal prisoner who created various coyprightable works while in federal prison. He brought suit alleging copyright infringement after his works were distributed […]

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