“Insolubly Ambiguous” Standard not Applicable at the USPTO InIn re Packard the Federal Circuit held that the USPTO need not follow the insolubly ambiguous standard in order to satisfy a prima facie rejection for indefiniteness. Rather, the Federal Circuit held that when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, […] Continue Reading →
Competing Without Practicing – Preliminary Injunctions for Patent Infringement InTrebo Manufacturing, Inc., v. Firefly Equipment, LLC, the Federal Circuit held that a plaintiff seeking a preliminary injunction for patent infringement does not need to practice the patent at issue in order to receive an injunction, so long as it sells a competing product. Trebro brought suit alleging that FireFly's sod harvester product infringed its […] Continue Reading →
StoneEagle v. Gillman – Patent Inventorship, Authorship, and Ownership In StoneEagle Services, Inc.,v. Gillman the Federal Circuit confirmed that assistance in reducing aninvention to practice generally does not contribute to inventorship. In this case, the issue centered on whether there was a sufficient controversy regarding inventorship for the case to remain in federal court. The plaintiff alleged that the defendant had "falsely claimed that […] Continue Reading →
Means-Plus-Function Claims and Written Description for Priority InEnOcean GMBH v. Face International Corp., the Federal Circuit vacated and remanded a final order of the U.S. Patent and Trademark Office (“PTO”) and the Board of Patent Appeals and Interferences (“Board”) with respect to EnOcean’s U.S. Patent Application No. 10/304,121. The Federal Circuit held (1) the term “receiver” was recited with sufficient structure as […] Continue Reading →
Patent Invalidity Based on Non-Compliant Claims of Priority InMedtronic Corevalve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed summary judgment of invalidity of the asserted claims of U.S. Patent No. 7,892,281 ("the '281 patent") based on the patent's claimed priority date. Medtronic sued Edwards for infringement of claims 3, 4, 7, 12, 14, and 15 of the '281 patent. The U.S. District […] Continue Reading →
Federal Circuit Clarifies Patent Term Adjustment The U.S. Court of Appeals for the Federal Circuit has issued an opinion that provides guidance for how Patent Term Adjustments should be calculated. Between June 2009 and May 2011, Novartis filed four civil lawsuits against the Director of the United States Patent and Trademark Office (PTO) in the United States District Court for the […] Continue Reading →
Exhausting Patent Rights Without a “Sale” InLifeScan Scotland, LTD v. Shasta Technologies, LLC, the Federal Circuit clarified the ability of a patnet holder to enforce patent rights in a product it has given away, but not "sold." Defendant Shasta Technologies appealed from a decision of the United States District Court for the Northern District of California granting LifeScan Scotland a preliminary […] Continue Reading →
New and Useful – August 26, 2013 · InUniversity of Utah v. Max-Planck-Gesellschaft, the Federal Circuit held that a patent lawsuit between a state university and the officers of another state university is not a controversy between two states. The case began when the University of Utah (“UUtah”) sued the Max Planck Institute and the University of Massachusetts (“UMass”) to correct inventorship […] Continue Reading →
Supplier’s Agreement to Manufacture May Trigger On-Sale Bar In an Opinion on August 14, 2013 (Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc.), the Federal Circuit ruled that the on-sale bar was triggered when a purchase order for slow cookers by patentee Hamilton Beach was confirmed by its supplier. The Court stated that Hamilton Beach’s transaction with its supplier was an offer for […] Continue Reading →
Federal Circuit Confirms Invalidity for Overbroad Written Description Novozymes v. DuPont Nutrition Biosciences involved patent 7,713,723 directed toward recombinant Bacillus alpha-amylase enzymes engineered to have enhanced acid tolerance and heat tolerance. The patent owner, Plaintiffs-Appellants Novozymes, sued DuPont for infringement. DuPont defended on grounds of non-infringement and invalidity and countersued for a declaratory judgment that the '723 patent was invalid for failing to […] Continue Reading →