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Supreme Court Issues Decision on Treble Damages

On the subject of willful infringement, 35 U.S.C. § 284 provides that, “[T]he court may increase the damages up to three times the amount found or assessed.‚¬ On its face, the statute allows for broad discretion by the district courts, but the Federal Circuit set out a stricter standard for awarding of enhanced damages, as […]

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“Unavailable” Joint Inventor after the America Invents Act

All applications for United States patent must include an oath or declaration signed by each inventor. The oath or declaration must be furnished to the United States Patent and Trademark Office no later than the date on which the issue fee is paid, but preferably on the same day as the non-provisional application is filed to […]

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Supreme Court to Review Willful Infringement Standard in Light of Octane Fitness

In the 2014 case of Octane Fitness v. ICON Health & Fitness, the Supreme Court overruled Federal Circuit jurisprudence and provided a flexible framework for district courts to grant attorney’s fees in “exceptional cases”under 35 U.S.C. § 285. The Court reasoned that requiring a prevailing party to show “material inappropriate conduct”or that a case was […]

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Legitimate Advocacy and Genuine Misrepresentation of Material Facts

The Federal Circuit has issued a decision inApotex Inc. v. UCB, Inc., upholding a district court's finding that Apotex's U.S. Patent No. 6,767,556 ("the '556 patent") is unenforceable due to inequitable conduct. Dr. Sherman, founder and chairman of Apotex, wrote the '556 patent application and is its sole inventor. The '556 is based on Canadian […]

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New and Useful – January 23, 2013

· In Wax v. Amazon Techs., the Federal Circuit upheld the TTAB’s denial of registration of the mark AMAZON VENTURES. Applicant filed and intent-to-use application to register the mark for “investment management, raising venture capital for others, . . . and capital investment consultation.” Amazon Technologies, Inc.—online retailer and owner of several AMAZON.COM marks—opposed the […]

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Federal Circuit Establishes New Standard for Inequitable Conduct

On May 25, 2011 the Federal Circuit released its en banc decision in Theresense, Inc. v. Becton, Dickinson & Co. , in which the Court articulated the appropriate standard for inequitable conduct before the PTO. The majority wrote, “[t]his court now tightens the standards for finding both intent and materiality in order to redirect a […]

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Federal Circuit to consider overhaul of inequitable conduct standards en banc

In an order today, the Federal Circuit granted rehearing en banc in Therasense, Inc. v. Becton, Dickinson & Co. The order indicates the court will be reconsidering its precedent on virtually the entire gamut of issues relating to inequitable conduct. Specifically, the questions presented are: Should the materiality-intent-balancing framework for inequitable conduct be modified or […]

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Disclosure of compounds without link to claimed method fails to meet written description requirement

In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law after a jury determined the asserted claims of an invention were not invalid under the written description requirement. The court, however, affirmed the district court's determination of no inequitable conduct.The Federal Circuit held the jury lacked […]

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Failure to raise KSR post-trial but pre-judgment results in waiver

In a recent decision, the Federal Circuit affirmed a jury's verdict of infringement, no obviousness, and no inequitable conduct. On appeal, the defendant for the first time argued the jury's verdict should be reversed in light of KSR. The Federal Circuit held the argument had been waived. The jury reached its verdict on December 8, […]

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High materiality without explanation for nondisclosure leads to inference of intent to deceive

In a recent decision, the Federal Circuit affirmed a district court's finding of inequitable conduct for one patent but reversed on a second, affirmed a finding of no invalidity of the second patent, but vacated the finding of infringement after modifying the district court's claim construction of a claim term. The court also reversed the […]

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