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 →
“Exclusive enterprise licensee” does not have standing to sue for infringement without patent owner In a decision today, the Federal Circuit reversed a decision by a district court declining to dismiss a patent infringement case brought by a party possessing an "exclusive enterprise license" in the patent-in-suit. The trial court certified the question of licensee standing to the court for interlocutory appeal. In reversing the district court's denial of […] 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 →
Malpractice claim regarding patent prosecution and litigation sufficient for federal jurisdiction In a decision today, the Federal Circuit affirmed a district court decision finding that where patent infringement is a necessary element of a malpractice claim arising from alleged patent prosecution errors as well as the mishandling of prior patent litigation, federal question subject matter jurisdiction exists.More detail of Air Measurement Techs., Inc. v. Akin Gump […] 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 →
Patentee need not join in appeal for exclusive licensee to retain standing In a decision Friday, the Federal Circuit affirmed a district court decision that prosecution history estoppel barred application of the doctrine of equivalents, and accordingly affirmed the district court's summary judgment of no infringement.The court also held, as a matter of first impression, that when joinder of the patent owner is required before the district […] Continue Reading →
Contempt proceedings proper, but filing ANDA not within scope of injunction, so no contempt In a decision yesterday, the Federal Circuit affirmed a district court's decision to hold a contempt proceeding for a defendant's alleged violation of an injunction "barring it from commercially manufacturing, using, selling, offering to sell, or importing into the United States generic divalproex sodium infringing" two patents. The court also affirmed the district court's decision […] Continue Reading →
Agreement to “submit to jurisdiction” is waiver of 11th Amendment immunity by state university In a decision yesterday, the Federal Circuit held that a state university had waived its Eleventh Amendment immunity from suit. The university entered into an agreement with a "governing law" provision that stated that "all parties agree to proper venue and hereby submit to jurisdiction in the appropriate State or Federal Courts of Record sitting […] Continue Reading →
Five things not to do when prosecuting patent applications In a decision yesterday, the Federal Circuit affirmed a district court's judgment of patent unenforceability as a result of inequitable conduct on behalf of the applicant. The court affirmed that five different actions on the part of the patentee constituted inequitable conduct:1. Failure to identify the association between the applicant and the individual providing a […] Continue Reading →
Denial of interim patent term extension affirmed In a decision rereleased as precedential yesterday, the Federal Circuit affirmed a district court’s denial of a preliminary injunction seeking to compel the Director of the United States Patent and Trademark Office to grant a request for an interim patent term extension under 35 U.S.C. § 156(e)(2).Somerset Pharmaceuticals, Inc. ("Somerset") is the owner of a […] Continue Reading →