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Federal Circuit to consider overruling State Street en banc

The Federal Circuit has, on its own motion, decided to hear a case en banc regarding the scope of patentable subject matter under § 101. The case, In re Bilski (No. 2007-1130), was argued before a panel of the court on October 1, 2007, and deals with the patentability of methods that involve only mental […]

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Discovery needed to determine effect of employment agreement on patent ownership, but no jury trial

In a decision yesterday, the Federal Circuit remanded a case for further discovery, finding that the district court abused its discretion by denying jurisdictional discovery regarding patent ownership due to the "central relevance" of the information. The patent ownership dispute arose from an employment contract between one of the two inventors and his employer that […]

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Request to stay injunction pending appeal may also be considered notice of appeal; estoppel bars DOE

In a decision yesterday, the Federal Circuit reversed a jury's verdict of infringement under the doctrine of equivalents. The court had previously vacated-in-part and reversed-in-part the district court's earlier summary judgment of infringement, the result of which was the jury trial conducted by the district court. The combination of the Federal Circuit's mandate in the […]

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Tenth Circuit: 1-800-SKI-VAIL does not infringe VAIL service mark

In a decision last week, the Tenth Circuit affirmed a district court's ruling in a trademark case in favor of the defendant, finding the defendant's use of the vanity telephone number "1-800-SKI-VAIL" for marketing services relating to the ski industry was not likely to be confused with the Plaintiff's service mark registration for "VAIL" encompassing […]

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No en banc rehearing for case holding “signals” not patentable subject matter

In a precedential order today, the Federal Circuit denied a petition for rehearing en banc in In re Nuijten. In that case, a panel of the court held that claims drawn to a "signal" did not fall into any of the statutory categories of patentable subject matter and were thus unpatentable under § 101. Judge […]

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All versions of MPEP now available on USPTO website

The USPTO has now made available all prior editions of the Manual of Patent Examining Procedure on its website here. This is great news for those who have ever had to try to track down a version of the MPEP that was more than about 10 years old, as they had not previously been easily […]

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Claims requiring an “insert” do not cover products with similar structure not “inserted”

In a decision Wednesday, the Federal Circuit affirmed a district court ruling granting summary judgment of non-infringement. At the outset, the court noted the patent at issue had been before the court multiple times, and the claim terms at issue in this appeal had already been construed by the court in earlier cases.As the district […]

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Hearing on summary judgment motions in claim and continuation rules case this morning

This morning at 10:00 EST, Judge James C. Cacheris in the Eastern District of Virginia will hold a hearing on the parties' motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules. When ruling on the preliminary injunction, Judge Cacheris granted the injunction in a ruling from the bench at […]

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Motions for summary judgment in claim and continuation rules case taken under advisement

We've just received word that the hearing on the motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules has concluded, and the motions have been taken under advisement. So, no ruling from the bench today, and no hint as to when a ruling might be expected.

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Second Circuit: Sales pitch of slogan to credit card companies not use in commerce

In a decision Monday, the Second Circuit affirmed a district court's summary judgment in a trademark case involving the slogan "My Life. My Card." An individual threatened to sue American Express for use of the slogan, alleging that he had superior rights in the mark based on efforts to license the phrase to various credit […]

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