Malpractice claim regarding patent prosecution and litigation sufficient for federal jurisdiction In a decision today, the Federal Circuit affirmed a district court decision finding that where patent infringement is a necessary element of a malpractice claim arising from alleged patent prosecution errors as well as the mishandling of prior patent litigation, federal question subject matter jurisdiction exists.More detail of Air Measurement Techs., Inc. v. Akin Gump […] Continue Reading →
Declaratory judgment jurisdiction exists, sufficient corroboration of prior public use to invalidate In a decision last week, the Federal Circuit upheld a district court's decision that a case or controversy existed providing subject matter jurisdiction and that the patent was invalid under 35 U.S.C. § 102(b) based on a public use more than a year before the patent's priority date. A licensee's decision to stop royalty payments […] Continue Reading →
Federal Circuit reverses dismissal of DJ action; sufficient case or controversy exists The Federal Circuit recently vacated the District Court for the Southern District of California's judgment granting a motion to dismiss five plaintiffs' (four joined on the appeal) declaratory judgment complaints for lack of subject matter jurisdiction, and remanded the case back to the district court to determine in its discretion whether to entertain the declaratory […] Continue Reading →
Statements in specification lead to narrower claim construction and noninfringement In a decision on Friday, the Federal Circuit affirmed a district court decision granting summary judgment of noninfringement. The only claim at issue required motors to apply a "pushing" force. The defendant's motors applied a "pulling" force that was, through intermediate apparatus, translated to a "pushing" force, but the court held that the patentee had […] Continue Reading →
Dismissal and covenant not to sue for past acts divests court of jurisdiction In a case decided today, the Federal Circuit affirmed a district court's dismissal of a patent infringement defendant's counterclaim for invalidity for lack of subject matter jurisdiction. The patent holder voluntarily dismissed its claims for infringement and agreed not to sue for acts occurring before the dismissal, and there was an insufficiently "immediate" controversy between […] Continue Reading →
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 […] Continue Reading →
Federal Circuit addresses claim construction, on-sale and public use bars, and DJ jurisdiction In a decision Friday, the Federal Circuit vacated in part a district court's claim construction of a several terms as well as its decision to find no infringement of patents owned by Honeywell. The court did, however, affirm the district court's retention of jurisdiction over the several withdrawn claims and the decision that Honeywell's pre-critical […] 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 →
Jurisdiction over Foreign Patents Requires – 1367(c) Analysis The question before the Federal Circuit in Jan K. Voda, M.D. v. Cordis Corporation was whether where an accused infringer is shown to have moved its infringing activities offshore to Germany, the U.K. and elsewhere, does supplemental jurisdiction of the court, pursuant to 28 U.S.C. ? 1367, permit an infringement determination under the parallel foreign […] Continue Reading →