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Equivalent can be “foreseeable” and thus barred under Festo even when equivalence unknown in the art

Today, the Federal Circuit rendered the latest decision in the nearly 20 year saga of Festo. The court refined the rules set forth by the Supreme Court in its Festo decision, specifically when an equivalent is unforeseeable, and thus not barred by prosecution history estoppel. The majority of the panel held that: an alternative is […]

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Federal Circuit: test for obviousness of structurally similar compounds is unchanged post-KSR

At the Federal Circuit, it appears that everything old is new again. In a case applying the new obviousness framework from KSR to structurally similar chemical compounds, the court affirmed a district court decision that claimed compounds would not have been obvious in light of the prior art. The court lauded the district court's "extensive […]

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Federal Circuit approves MPEP guidelines for written description rejections

The Federal Circuit addressed the standard applied by the USPTO for establishing a prima facie case of failure to meet the written description requirement in Hyatt v. Dudas today. The court found that compliance with MPEP § 2163.04(I)(B), by pointing out the nonexistence of support in the specification and identifying the claim limitation(s) at issue, […]

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“Attorney argument” and late disclosure not enough to support inequitable conduct finding

The Federal Circuit issued a ruling yesterday that provides some guidance on the issues of indefiniteness and inequitable conduct. The court held that the term "near" was sufficiently definite for identifying the location of an incision in veterinary surgery, because the meaning could be adduced from the intrinsic evidence. Further, the court held that as […]

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Federal Circuit reverses claim construction and noninfringement finding

In a claim construction appeal, the Federal Circuit found that the doctrine of claim differentiation, combined with statements made in a petition to make special, led to a broader claim construction than that offered by the district court. Also, there was no unequivocal disclaimer of the broader claim scope during prosecution of either the patent-in-suit […]

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Federal Circuit: less distinctive portions of a mark still considered in likelihood of confusion

In a case decided today, the Federal Circuit reversed the Trademark Trial and Appeal Board's denial of an opposition to registration of a trademark. Specifically, the court rejected the Board's finding that there was no likelihood of confusion because the Board improperly considered an element present in both marks a "weak component" of the competing […]

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Attorney’s exclusion from USPTO practice based on ties to invention promotion firm affirmed

Unsuspecting inventors aren't the only ones hurt by fraudulent invention promotion firms. As a case decided today by the Federal Circuit shows, the attorneys they employ can also be harmed. Of course, in this case, the attorney isn't a very sympathetic figure. He was on the payroll of an invention promotion firm in the 1990s, […]

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Post-KSR: Expert testimony enough for infringer to avoid summary judgment of no invalidity?

In a nonprecedential ruling yesterday, the Federal Circuit reversed a district court's grant of summary judgment of no obviousness. The twist was that the only evidence in the record cited by the court as demonstrating a genuine issue of material fact was the testimony of the defendant's expert witness that there would have been a […]

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Means-plus-function claim must recite some structure, “known equipment” not enough

In a decision today, the Federal Circuit affirmed a district court's finding of invalidity of a several claims of a patent for indefiniteness under 35 U.S.C. § 112, ¶ 2. The patent specification did not describe a corresponding structure for the claim limitation "control means" as required by 35 U.S.C. § 112, ¶ 6, but […]

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Federal Circuit: no jurisdiction over contempt appeal, but dissolution of injunction affirmed

In a decision Wednesday, the Federal Circuit dismissed an appeal of a contempt order for lack of jurisdiction and ruled that the district court did not abuse its discretion in dissolving a preliminary injunction. The defendant was found in contempt of a preliminary injunction, but also found two new pieces of prior art that made […]

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