Agreement to assign to employer requires separate assignment; dismissal for lack of standing vacated In a decision released late Friday, the Federal Circuit vacated and remanded a district court's decision that a plaintiff did not have standing to sue for patent infringement. At issue was whether a joint inventor of the patent had assigned his interest in the patent to a third party, thereby making the third party a […] Continue Reading →
“Comprised of” means the same as “comprising,” judgment of noninfringement affirmed Today, the Federal Circuit addressed how to interpret the phrase "comprised of" in a patent claim. In holding that the phrase should be construed in the same open-ended way the term "comprising" is traditionally construed, the court disagreed with the district court's finding that the phrase was closed-ended and excluded the presence of all elements […] Continue Reading →
Finding of infringement of two patents affirmed, one reversed, damages award vacated In a highly anticipated recent decision, the Federal Circuit affirmed the judgment of infringement against Vonage with respect to two Verizon patents, holding that the district court did not err in its construction of the disputed claim terms and that the claims were not obvious. With respect to a third patent, the Federal Circuit held […] Continue Reading →
USPTO’s claim construction not reasonable, anticipation rejection reversed In a decision today, the Federal Circuit reversed the rejection of claims in a pending application as anticipated. The relevant limitation was "flexible polyurethane foam reaction mixture." The examiner and BPAI interpreted this to encompass any mixture that ultimately produces a flexible polyurethane foam. The alleged anticipatory reference initial produced a rigid foam, but then […] Continue Reading →
Summary judgment of noninfringement reversed: challenge to reliability of expert testimony waived In a decision Friday, the Federal Circuit reversed a district court's grant of summary judgment of noninfringement. The court held the district court improperly made a factual determination regarding the reliability of an expert's test used to establish infringement. Based on statements made during summary judgment briefing and argument, the defendants could not argue the […] Continue Reading →
Declaratory judgment jurisdiction exists, sufficient corroboration of prior public use to invalidate In a decision last week, the Federal Circuit upheld a district court's decision that a case or controversy existed providing subject matter jurisdiction and that the patent was invalid under 35 U.S.C. § 102(b) based on a public use more than a year before the patent's priority date. A licensee's decision to stop royalty payments […] Continue Reading →
Injunction against patentee’s assertions of infringement reversed, bad faith standard not met In a decision last week, the Federal Circuit vacated a preliminary injunction after finding that the district court abused its discretion. The district court enjoined a patent owner from any future correspondence with any existing or potential customers of an alleged infringer (started by former employees of the patent owner), essentially stopping the patentee from […] Continue Reading →
Claims to a “method for mandatory arbitration resolution” not drawn to statutory subject matter In the second of two decisions regarding the scope of patentable subject matter on Thursday, the Federal Circuit found claims in a patent application directed toward a "method for mandatory arbitration resolution" as not directed toward statutory subject matter under § 101. The USPTO had not addressed the statutory subject matter issue, rather the Federal […] Continue Reading →
If you just have the right to sue under a patent, don’t expect to actually be able to sue anyone Yesterday, the Federal Circuit clarified the requirements for a party to attain standing to bring a patent infringement suit when the party does not hold all substantial rights in the patent. In defining what constitutes an "injury in fact" under the constitutional standing requirement, the court held that, when a party does not have all […] Continue Reading →
Federal Circuit clarifies standard for proving joint infringement The Federal Circuit issued a decision today affirming a district court's finding of noninfringement when a defendant neither carried out all of the steps of a method claim nor was responsible for the actions of the parties that did carry out all steps to the method claim. In doing so, the court clarified the proper […] Continue Reading →