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Improper revival cannot be raised as grounds for invalidity in an infringement action

In a decision yesterday, the Federal Circuit reversed a district court's summary judgment of invalidity. The district court held that the application that led to the patent-in-suit was abandoned, and the USPTO improperly revived it, rendering the patent invalid. The applicant missed the 30-month PCT national phase deadline by one day, but successfully petitioned to […]

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En banc Federal Circuit scraps point of novelty test for design patent infringement

In an en banc decision this morning, the Federal Circuit has unanimously held that the "point of novelty" test for design patent infringement should no longer be applied. As stated by the court: [W]e hold that the "point of novelty" test should no longer be used in the analysis of a claim of design patent […]

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Disclosure of gene from one bacterial source cannot support claims to gene from any bacterial source

In a recent decision, the Federal Circuit affirmed a district court's grant of summary judgment of non-infringement and invalidity of various claims of three patents. The district court held no genuine issue of fact existed regarding noninfringement or invalidity under the written description requirement. The patents related to DNA polymerases, and the claims at issue […]

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Demonstration of product at trade show didn’t meet all claim limitations; no personal jurisdiction

In a decision Tuesday, the Federal Circuit affirmed the dismissal of a patent infringement claim for lack of personal jurisdiction. The alleged infringer showed the allegedly infringing product at a trade show in DC, which led the plaintiff to file suit there. The district court dismissed, holding the defendant had not actually committed an infringing […]

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Prior court decision of no invalidity based on prior art reference doesn’t bar reexamination

The Federal Circuit recently construed the scope of the revised reexamination statute, 35 U.S.C. § 303, specifically what is required for a "substantial new question of patentability." In this case, the relevant reference was cited during the initial examination of the application that led to the patent under reexamination, but as a supporting reference. The […]

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Patent claims not at issue at trial can’t be found invalid, even if mentioned in complaint

In a recent decision, the Federal Circuit reversed much of a district court's finding of willful infringement of a plaintiff's patents, tortious interference with the plaintiff's business relationships, and invalidity of the defendant's patents. Regarding the willful infringement, the Federal Circuit determined that the district court had improperly interpreted the claims of the plaintiff's patents-in-suit […]

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Covenant not to sue removes jurisdiction despite lingering Hatch-Waxman exclusivity issues

In a recent decision, the Federal Circuit affirmed a district court's decision involving declaratory judgment jurisdiction in the context of abbreviated new drug applications (ANDAs) and a related covenant-not-to-sue involving one patent at issue. The court affirmed a covenant-not-to-sue coupled with a stipulation of validity and enforceability removed any case or controversy required for declaratory […]

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No evidence of intent to deceive, no inequitable conduct

In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of inequitable conduct against the patentee. At issue was whether the patentee's failure to disclose a letter describing an aspect of the prior art constituted inequitable conduct. The court reversed finding that the alleged infringer had failed to provide sufficient […]

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Clinical trials necessary to determine invention works for intended purpose

In a recent decision, the Federal Circuit affirmed a district court's ruling in favor of AstraZeneca, holding that the generic drug manufacturers Apotex and Impax Laboratories infringed patents for the popular heartburn medication Prilosec® (generic form omeprazole) in filing abbreviated new drug applications (ANDAs). The Federal Circuit previously addressed these patents in the context of […]

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Federal Circuit affirms USPTO’s interpretation of inter partes reexamination statute

In a decision Tuesday, the Federal Circuit affirmed a district court's holding that the USPTO's interpretation of the inter partes reexamination procedure was correct, and therefore that all patent applications (other than reissue applications) filed after November 29, 1999 are eligible for inter partes reexamination, even if priority is claimed to an application filed before […]

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