Priority claim under section 119 denied; foreign application not filed “on behalf of” U.S. applicant Today the Federal Circuit addressed whether priority to an earlier-filed foreign application may be claimed under § 119(a) if there was no legal relationship between the foreign applicant and the U.S. applicant at the time the foreign application was filed. The court held that the right of priority under § 119(a) is personal and determined […] Continue Reading →
Federal Circuit reverses dismissal of DJ action; sufficient case or controversy exists The Federal Circuit recently vacated the District Court for the Southern District of California's judgment granting a motion to dismiss five plaintiffs' (four joined on the appeal) declaratory judgment complaints for lack of subject matter jurisdiction, and remanded the case back to the district court to determine in its discretion whether to entertain the declaratory […] Continue Reading →
Statements in specification lead to narrower claim construction and noninfringement In a decision on Friday, the Federal Circuit affirmed a district court decision granting summary judgment of noninfringement. The only claim at issue required motors to apply a "pushing" force. The defendant's motors applied a "pulling" force that was, through intermediate apparatus, translated to a "pushing" force, but the court held that the patentee had […] Continue Reading →
Federal Circuit affirms preemption of D.C.’s Prescription Drug Excessive Pricing Act of 2005 In a recent decision, the Federal Circuit affirmed the District Court for the District of Columbia's judgment that the federal patent laws preempted the District of Columbia's Prescription Drug Excessive Pricing Act of 2005. More details of Biotechnology Indus. Org. v. District of Columbia after the jump. The challenged legislation at issue is the Excessive […] Continue Reading →
Federal Circuit: Analogous art test survives KSR, but obviousness affirmed In a case decided yesterday, the Federal Circuit affirmed a decision by the BPAI finally rejecting all but one claim of a patent under reexamination as obvious. The patentee admitted that all elements of the claims save one were present in two relevant prior art references and that another reference disclosed the final element, but […] Continue Reading →
Federal Circuit provides more detail on FDA research exemption to infringement The Federal Circuit recently decided a case on remand from the Supreme Court's decision regarding the research exception to patent infringement (35 U.S.C. § 271(e)(1), "The FDA exception"). The Federal Circuit reversed the district court's finding of infringement, holding that the experiments were not infringements because they were reasonably related to research that would be […] Continue Reading →
Invalidity affirmed on double patenting grounds; inequitable conduct finding vacated In the second of two rulings yesterday, the Federal Circuit found the patent on Toprol-XL® (a drug used to treat hypertension, angina, and congestive heart failure) invalid based on obviousness-type double patenting, affirming summary judgment on the issue. The court vacated and remanded the grant of summary judgment of unenforceability due to inequitable conduct, as […] Continue Reading →
Federal Circuit affirms requirement to amend listing of goods to exclude goods in another class In the first of two Federal Circuit rulings today, the court affirmed that the USPTO was within its authority when it refused to allow an applicant to rely on the international classification to clarify ambiguities in the listing of goods for a trademark. In affirming the TTAB, the court emphasized the deference due to the […] Continue Reading →
Dismissal and covenant not to sue for past acts divests court of jurisdiction In a case decided today, the Federal Circuit affirmed a district court's dismissal of a patent infringement defendant's counterclaim for invalidity for lack of subject matter jurisdiction. The patent holder voluntarily dismissed its claims for infringement and agreed not to sue for acts occurring before the dismissal, and there was an insufficiently "immediate" controversy between […] Continue Reading →
Determination of level of ordinary skill in the art erroneous, leads to finding of obviousness In a nonprecedential ruling today, the Federal Circuit held that the district court incorrectly determined the level of ordinary skill in the art, and that when the level of skill was determined correctly, the invention was obvious based on a prior art reference that was directed toward those having greater skill than the district court […] Continue Reading →