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Federal Circuit: And can mean or, if it makes the claim make sense

In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent. The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or." Specifically, based on the specification and other […]

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Patent for better mousetrap obvious, secondary indicia could not rebut “strong prima facie case”

In a decision Friday, the Federal Circuit addressed the issue of post-KSR obviousness and fraudulent misrepresentation. Regarding obviousness, the court held that the secondary indicia of nonobviousness simply could not overcome a "textbook case" of claims involving "a combination of familiar elements according to known methods that does no more than yield predictable results." Interpreting […]

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Patent ownership may change by operation of law, including operation of foreign law

In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership. The inventor of the patent died intestate as the only owner of the patent. While his two daughters executed transfers of ownership to the inventor's widow, the […]

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Computer-implemented means-plus-function claim invalid when no algorithm disclosed in specification

In a decision Friday, the Federal Circuit affirmed a final judgment of invalidity of all claims of a patent indefinite. The claims had several means-plus-function clauses that were computer-implemented, however no algorithms for implementing the claimed functions were disclosed in the specification. The district court held the claims invalid because there was no "structure" (i.e., […]

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Patentee cannot recapture claim scope disavowed during prosecution to prove infringement

In a decision Friday, the Federal Circuit affirmed a district court's claim construction and its concomitant grant of summary judgment of noninfringement, as well as its denial of attorney fees under § 285. The district court held the patentee had, during prosecution of the patent at issue, made a clear and unmistakable disavowal of claim […]

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271(e) safe harbor applies to both product and method claims in ITC proceedings

In a ruling today, the Federal Circuit affirmed in part a decision by the International Trade Commission (ITC) concerning the application of 19 U.S.C. § 1337 and 35 U.S.C. § 271(e)(1) to imported products and products imported produced via a patented process. The main issue before the court was whether the safe harbor against infringement […]

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Section 121 safe harbor applies only to divisional, not continuation-in-part; later patent invalid

In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement. There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds. […]

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When DJ and infringement suits both filed, transfer factors determine appropriate forum

In a decision Friday, the Federal Circuit decided a case addressing the requirements for a declaratory judgment action post-MedImmune . The court reversed and remanded a district court’s decision that there was no declaratory judgment jurisdiction applying the pre-MedImmunereasonable apprehension of suit standard rejected by the Supreme Court. The Federal Circuit applied the MedImmunerequirement for a […]

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Dependent claim can be construed to be broader than independent claim based on prosecution history

In a decision last week, the Federal Circuit held a district court construed 1 of 2 claim terms correctly, and incorrectly concluded that prosecution history estoppel barred application of the doctrine of equivalents to a third claim term because the narrowing amendment was only tangentially related to the equivalent at issue. As a result, the […]

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Post-verdict infringement royalty must take into account changed bargaining position of parties

In a decision Tuesday, the Federal Circuit addressed the issuance, stay, and subsequent dissolution of a permanent injunction. Further, the court addressed how damages should be allocated from infringement during a stay. The district court took the jury's reasonable royalty for pre-verdict infringement and trebled it to determine the applicable post-verdict royalty. The Federal Circuit […]

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