Elements of infringement claim not jurisdictional; “sale” occurs at location of buyer and seller In a decision yesterday, the Federal Circuit affirmed a district court's denial of the defendant's motion to dismiss for lack of subject matter jurisdiction. The court also denied the defendant's post-verdict motion for judgment as a matter of law. The defendant contended that because it shipped its allegedly infringing products f.o.b. from its place of […] Continue Reading →
Quality of investigation irrelevant to whether claims objectively baseless In a Wednesday decision, the Federal Circuit affirmed a district court decision that a patent holder's communications with a competitor's customers that the competitor's products were infringing were not objectively baseless, and therefore could not support state law tort claims of unfair competition, intentional interference with contractual relations, interference with prospective economic advantage, and trade […] Continue Reading →
Two district courts, one correct claim construction; $103 million damage award vacated In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction. The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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, […] Continue Reading →
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 […] Continue Reading →
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. […] Continue Reading →
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 […] Continue Reading →