Priority claim contained in data sheet and appended via certificate of correction valid

In a decision yesterday, the Federal Circuit vacated a district court's denial of a preliminary injunction. The district court denied the injunction on the basis of a substantial question of validity of the patent. The accused infringer alleged the patent was invalid under 35 U.S.C. § 102(b) based on a prior public use by the […]

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When priority not decided at PTO patentee bears burden of showing entitlement to earlier application

In a decision Friday, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity with respect to all asserted claims of two patents. More particularly, the court held that the claims of the patents were not entitled to the priority date of an earlier-filed application, and were therefore anticipated by intervening prior […]

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Section 121 safe harbor applies only to divisional, not continuation-in-part; later patent invalid

In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement. There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds. […]

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Corroboration of reduction to practice must corroborate that invention worked for intended purpose

In a decision today, the Federal Circuit affirmed the BPAI's decision in an interference proceeding awarding priority to the senior party. The junior party attempted to show an actual reduction to practice before the senior party's priority date. While the junior party offered evidence of an earlier actual reduction to practice, the corroborating evidence was […]

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Incorporation by reference did not incorporate necessary disclosure, priority chain broken

Today, the Federal Circuit held a patent was anticipated under 35 U.S.C. § 102(b) by another patent earlier in the patent-in-suit's priority chain. The court held the district court erred in finding that the patent at issue was entitled to a priority date of the earlier-filed patent, leading to the district court's improper conclusion that […]

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Priority claim to foreign filing awarded in interference; disclosure in compliance with section 112

The Federal Circuit yesterday addressed the requirements for the use of a foreign filing date as a priority date in a U.S. interference proceeding. The court awarded the interference party the priority benefit of the foreign filing date based on the "constructive reduction to practice of an invention whose disclosure is in compliance with the […]

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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 […]

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