Filewrapper

Incorporation by reference did not incorporate necessary disclosure, priority chain broken

Today, the Federal Circuit held a patent was anticipated under 35 U.S.C. § 102(b) by another patent earlier in the patent-in-suit's priority chain. The court held the district court erred in finding that the patent at issue was entitled to a priority date of the earlier-filed patent, leading to the district court's improper conclusion that […]

Continue Reading →

Application of doctrine of equivalents to range limitation in claim does not vitiate the limitation

In a decision Friday, the Federal Circuit affirmed a district court's claim construction, but reversed its rulings regarding the sufficiency of notice of infringement and the applicability of the doctrine of equivalents. Regarding sufficiency of notice under 35 U.S.C. 287(a), the court held that while the patentee did not mark its products, its notice of […]

Continue Reading →

Failure to discover title defect doesn’t make case exceptional; Rule 11 burden-shifting inapplicable

In a decision yesterday, the Federal Circuit addressed when a case may be considered "exceptional" under 35 U.S.C. § 285, and therefore potentially warrant an award of attorney fees. The plaintiff purchased rights to a patent "as is" from a company going through bankruptcy. However, it was later revealed that the company did not have […]

Continue Reading →

ITC’s claim construction reversed, revised construction leads to Section 337 violation

In a decision yesterday, the Federal Circuit reversed a decision of the U.S. International Trade Commission that a violation of § 337 of the 1930 Tarriff Act had not occurred. The court reversed the ITC's claim construction, and based on the revised claim construction, found the accused products infringed. This modified claim construction also resulted […]

Continue Reading →

Federal Circuit denies rehearing en banc in DC prescription drug price case

In a precedential order today, the Federal Circuit denied a petition for rehearing and rehearing en banc in Biotechnology Industry Organization vs. District of Columbia. On August 3, the court held that the Prescription Drug Excessive Pricing Act of 2005 enacted by the District of Columbia City Council, which prohibited a patented drug from being […]

Continue Reading →

Waiver of immunity in earlier case does not operate as waiver in later case involving same patent

In a decision Tuesday, the Federal Circuit affirmed a district court's decision that a state had not waived its Eleventh Amendment sovereign immunity. The state had intervened in an earlier, related action, but that action was subsequently dismissed for improper venue. The court held that while the state waived its immunity in the first suit […]

Continue Reading →

Infringement finding and denial of permanent injunction in favor of ongoing royalty affirmed

In a decision today, the Federal Circuit affirmed a jury verdict finding infringement under the doctrine of equivalents of a patent relating to hybrid engines used in motor vehicles. The court also affirmed the district court's denial of a permanent injunction and its award of an ongoing royalty on infringing vehicles, rejecting the argument that […]

Continue Reading →

Patent prosecution malpractice claim properly heard in federal court and appealed to Federal Circuit

In its second decision yesterday in a legal malpractice case, the Federal Circuit affirmed the district court's decision that jurisdiction was proper over a legal malpractice claim on the basis that the malpractice claim involved a question of claim scope which presented a substantial question of patent law. The alleged malpractice involved prosecution of a […]

Continue Reading →

“Ordinary creativity” of one of ordinary skill in the art used to show claims not indefinite

In a decision today the Federal Circuit held that the district court had incorrectly determined that AllVoice Computing PLC's patent was invalid for indefiniteness and failure to meet the best mode requirement. In reaching its decision, the Federal Circuit determined that the lower court had used the prosecution history of the patent to interpret the […]

Continue Reading →

Prior art addressing different problem shows what was “common knowledge,” obviousness affirmed

In a decision Friday, the Federal Circuit affirmed the rejection of all claims subject to reexamination as obvious. The USPTO had rejected the claims based on a combination of three prior art references. The court provided an expansive discussion of obviousness post-KSR. The court noted that where the Federal circuit had gone wrong in KSR […]

Continue Reading →

Stay in Touch

Receive the latest news and updates from us and our attorneys.

Sign Up