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Covenant not to sue insufficient to defeat DJ jursidiction because of Hatch-Waxman issues

In a recent decision, the Federal Circuit addressed the issue of declaratory judgment jurisdiction in the context of the Hatch-Waxman Act. The court found that a unilateral covenant not to sue on a patent does not defeat declaratory judgment jurisdiction because there is still a "restraint on the free exploitation of non-infringing goods." This case […]

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Patentee could not rebut presumption of estoppel; noninfringement finding affirmed

In a decision Friday, the Federal Circuit affirmed a district court decision holding that application of the doctrine of equivalents was barred as the Festo presumptions had not been rebutted. The court noted that the patentee did not show that the alleged equivalent was unforeseeable at the time of making the narrowing amendment (which was […]

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License under method patent not limited to use with licensor’s products absent express limitation

In a decision Wednesday, the Federal Circuit affirmed-in-part, vacated-in-part, and reversed-in-part a district court's decision regarding two patents. The district court held the broadest claims of both patents invalid and not infringed, and dismissed claims of inequitable conduct relating to the patents. The Federal Circuit affirmed with respect to one patent, but vacated and reversed […]

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Party defaulting before district court and enjoined cannot attack registration via cancellation

In a decision this week, the Federal Circuit held that a party against whom a default judgment was entered in a trademark infringement case before a district court cannot thereafter petition to cancel the registration at issue before the TTAB. The TTAB held the claim barred by res judicata. The court held that res judicata […]

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Assignee of patent not bound by previous assignee’s agreement to arbitrate

In a decision yesterday, the Federal Circuit affirmed a finding by a district court that a party may not be compelled to arbitrate as provided in a patent license agreement when the party was not a signatory party to the agreement but merely an assignee of the patent covered by the agreement. As a result, […]

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Preamble not limiting when duplicative of claim limitations and not added to overcome rejection

In a recent decision, the Federal Circuit held that a district court erred in its construction of several claim terms in a patent, and as a result, vacated the district court's summary judgment of noninfringement and no invalidity. The court affirmed the district court's decisions regarding several other issues, including laches, inequitable conduct, and inventorship. […]

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When priority not decided at PTO patentee bears burden of showing entitlement to earlier application

In a decision Friday, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity with respect to all asserted claims of two patents. More particularly, the court held that the claims of the patents were not entitled to the priority date of an earlier-filed application, and were therefore anticipated by intervening prior […]

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If ordinary meaning of claim term does not resolve disputed construction, court must construe term

In a decision last week, the Federal Circuit vacated and remanded a jury's finding of willful infringement case back to a district court, based on errors in claim construction and application of the doctrine of equivalents. The district court's original Markman hearing determined that no construction was necessary for a particular claim term, "only if," […]

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Denial of injunction against sending letters asserting infringement affirmed

In a decision Tuesday, the Federal Circuit affirmed the denial of a preliminary injunction seeking to prevent a patentee from representing to the defendant's customers that the defendant's product potentially infringed the plaintiff's patent. The patent at issue had a lengthy and complicated prosecution history that included an interference proceeding. In that proceeding, the BPAI […]

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Same claim term can be interpreted differently in the same claim if specification warrants

In a decision last week, the Federal Circuit decided a case addressing the limitations of what constitutes "insolubly ambiguous" claim terms in order to amount to indefiniteness. The district court held the asserted claims invalid because they impermissibly mixed two statutory classes of subject matter, as well as because they required construing the same term […]

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