Certificate of correction invalid, infringement case continues with original claims The Federal Circuit yesterday voided a certificate of correction which had been issued changing the scope of a patent's claims. Because the error corrected broadened the claims and was not the type of error that was "immediately apparent and leave no doubt as to what the mistake is," the certificate of correction was inappropriate. As […] Continue Reading →
Patent Term Extensions: A Leap Frog of Sorts to Set Expiration Date In a case before the Federal Circuit, the court affirmed the district court's decision that a patent term extension under the Hatch-Waxman Act, 35 U.S.C. § 156, may be applied to a patent subject to a terminal disclaimer under 35 U.S.C. § 253. The Federal Circuit found that the language of § 156 is unambiguous […] Continue Reading →
Another post-MedImmune declaratory judgment jurisdiction decision The Federal Circuit addressed the requirements for declaratory judgment jurisdiction in a published decision for the second time this week. This time the parties are pharmaceutical companies, but the result is the same: the lower court, applying the old "reasonable apprehension of suit" standard, found no jurisdiction, the Federal Circuit, applying a post-MedImmune standard reverses, […] Continue Reading →
Federal Circuit considers DJ jurisdiction post-MedImmune: Is an offer of license now enough? In a very interesting opinion, the Federal Circuit today addressed what is required to support jurisdiction for a declaratory judgment by a party under threat of a possible patent infringement lawsuit. This is the first substantive discussion of the issue since the Supreme Court's decision in MedImmune, where the Court held that a patent licensee […] Continue Reading →
Obviousness: A Primer by the Federal Circuit In a case before the Federal Circuit, the district court's holding that a patent was valid and enforceable was rejected, not only because the Federal Circuit found the holding incorrect, but also because the holding reflected a serious misconception regarding the proper burden of proof each party bears in patent litigation. The Federal Circuit set […] Continue Reading →
Be careful what you wish for: broad claims found invalid In another case making a return trip to the Federal Circuit, the court held that under its broad claim construction decided in the first appeal, the asserted claims were invalid in two patents as not enabled and in two more as anticipated. In order to secure a finding of infringement, the patentee, Liebel-Flarsheim, argued for […] Continue Reading →
Inequitable Conduct Found in False Statements and Deception In a case before the Federal Circuit, the District Court’s conclusion that Cantor’s patent was unenforceable due to inequitable conduct was affirmed. The matter before the Court involved a patent for a method and system for trading financial instruments. Specifically, Cantor developed a system that would automate the trading process and avoid the use of […] Continue Reading →
Equivalent not tangentially related to amendment, doctrine of equivalents unavailable In a case coming before the Federal Circuit for the second time, the court reversed a finding of infringement under the doctrine of equivalents because of prosecution history estoppel. The court rejected the patentee's argument that the amendment was only tangentially related to the equivalent, thus the Festo presumption of surrender of equivalents was not […] Continue Reading →
Decision to accept later filing date due to omitted items not correctable via reissue When you make a conscious choice between alternatives during prosecution, the Federal Circuit says you’re stuck with it. That’s the message from In re Serenkin, where the court held that an inventor could not, through reissue, claim priority to his provisional filing. Serenkin had filed a PCT application just before the one-year anniversary of his […] Continue Reading →
Federal Circuit Addresses Claim Differentiation The Federal Circuit further clarified the doctrine of claim differentiation in Anderson Corp. v. Fiber Composites, LLC. Andersen Corp. owns a number of patent relating to composite materials made from a mixture of polymer and wood fiber as well as patents that relate to structural parts made from those composite materials. Fiber Composites manufactures and […] Continue Reading →