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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On-sale bar cannot be avoided by experimentation conducted by patentee’s customer

In a decision Thursday, the Federal Circuit provided additional guidance on the on-sale bar of § 102(b). In the case, the patentee developed a series of prototypes that were then sold to its customer, who then experimented with the prototypes and requested modifications to the prototypes. The prototypes were also accompanied by offers to sell […]

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Another preliminary injunction vacated on appeal, this time because of claim construction

For a second time this week, the Federal Circuit vacated a preliminary injunction entered by a district court. This time, the court found the district court's claim construction too broad, and under the courts revised, narrower construction, found that the plaintiffs were not likely to succeed on the merits of the case. As a result, […]

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Seizure of goods with counterfeit marks not an “embargo,” so no CIT jurisdiction to challenge fine

In a decision this week, the Federal Circuit vacated the decision of the Court of International Trade (CIT) and remanded with instructions to dismiss the plaintiff's complaint for lack of subject matter jurisdiction.The case arose out of a civil fine levied against the plaintiff for importation of counterfeit goods. The plaintiff brought suit in the […]

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Post-KSR obviousness arguments cast sufficient “doubt” on validity to vacate preliminary injunction

In a decision yesterday, the Federal Circuit vacated a preliminary injunction entered in the Northern District of Ohio enjoining the selling and copying of a product used to practice a method claimed in a patent. In doing so, the Federal Circuit utilized of the traditional four–factor test for preliminary injunctions and specifically analyzed the first […]

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Federal Circuit to consider overruling State Street en banc

The Federal Circuit has, on its own motion, decided to hear a case en banc regarding the scope of patentable subject matter under § 101. The case, In re Bilski (No. 2007-1130), was argued before a panel of the court on October 1, 2007, and deals with the patentability of methods that involve only mental […]

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Discovery needed to determine effect of employment agreement on patent ownership, but no jury trial

In a decision yesterday, the Federal Circuit remanded a case for further discovery, finding that the district court abused its discretion by denying jurisdictional discovery regarding patent ownership due to the "central relevance" of the information. The patent ownership dispute arose from an employment contract between one of the two inventors and his employer that […]

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Request to stay injunction pending appeal may also be considered notice of appeal; estoppel bars DOE

In a decision yesterday, the Federal Circuit reversed a jury's verdict of infringement under the doctrine of equivalents. The court had previously vacated-in-part and reversed-in-part the district court's earlier summary judgment of infringement, the result of which was the jury trial conducted by the district court. The combination of the Federal Circuit's mandate in the […]

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