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Federal Circuit clarifies burdens of proof when priority to earlier application is contested

In a recent decision, the Federal Circuit affirmed a district court's determination that the asserted claims of a patent were not entitled to the effective filing date of the earliest application in a chain of four applications, and that as a result the claims were anticipated by intervening prior art. The court explained its recent […]

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Federal Circuit declines to consider constitutionality of BPAI judge appointments, affirms rejection

In a decision this week, the Federal Circuit decided a case involving both obviousness and the Appointments Clause relating to allegedly unconstitutional appointment of members of the Board of Patent Appeals and Interferences. The court determined that appellants failed to timely raise the issue of the constitutionality of the Appointments Clause by not presenting it […]

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Disclosure of single antibody insufficient to describe genus of related antibodies

In a recent decision, the Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences sustaining in part the examiner's final rejection of the broadest claim in an application, directed to methods of treating neurofibrosarcoma using monoclonal antibodies. The Board reversed the examiner's rejection of the claim for lack of enablement, but […]

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Bilski: No machine or transformation, no patentable method, at least for now

As we reported Thursday, the Federal Circuit has decided In re Bilski, an en banc decision regarding the scope of patentable subject matter. Specifically, the court addressed what is necessary for a method to fall within the scope of patentable subject matter under § 101. The court, after examining the relevant Supreme Court cases on […]

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Federal Circuit reaffirms anticipatory reference must have all elements as arranged in the claim

In a recent decision, the Federal Circuit affirmed a district court's finding of indefiniteness but reversed the district court's holding of anticipation of other claims. The district court held the means-plus-function limitations did not have corresponding structure disclosed in the specification, rendering them indefinite, and that the combination of two examples in a prior art […]

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Bilski decided

The decision is available here. It adopts the "machine-or-transformation" test for patentable subject matter. As stated by the majority: The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim […]

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Remittitur without new trial requires legal error, not error as a matter of law

In a recent decision, the Federal Circuit reversed a district court's reduction of the jury's damages award, remanding the case for a new trial on damages, and affirmed the jury's verdict of willful infringement and the district court's award of attorney fees under § 285. The district court held there was insufficient evidence as a […]

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Jury’s pre-KSR nonobviousness verdict reversed post-KSR

In a recent decision, the Federal Circuit affirmed a district court's grant of a judgment as a matter of law that the asserted claims of a patent were obvious after a jury verdict of no obviousness. KSR was decided after the jury's verdict but before the district court ruled on the defendant's motion for judgment […]

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If no anticompetitive effect outside exclusionary zone of patent, reverse payment OK in ANDA cases

In a recent decision, the Federal Circuit upheld the district court's grant of summary judgment in an antitrust case. At issue was whether reverse payments (from the patentee to the accused infringer) in the context of the Hatch-Waxman Act violated antitrust laws. The Federal Circuit observed that "[t]he essence of the inquiry is whether the […]

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ITC cannot enter limited exclusion order against non-parties

In a decision last week, the Federal Circuit vacated a limited exclusion order issued by the International Trade Commission in the most recent dispute between Qualcomm and Broadcom. The case involved alleged infringement of one of Broadcom's patents relating to chips for wireless communication, specifically directed toward power saving technology. Although Qualcomm was the only […]

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