Intellectual Property Law

Finding of inequitable conduct affirmed, Judge Rader expresses concern over resurgence of defense

Posted on May 14, 2008
In a decision today, the Federal Circuit affirmed a district court's finding of inequitable conduct resulting from Rule 132 declarations that were used to overcome obviousness and anticipation rejections. The declarations used a difference in half-lives to distinguish the claimed composition over the prior art, however, it failed to indicate that the comparative half-lives were calculated using different initial dosages...

Claim construction and noninfringement affirmed on one patent, vacated on another

Posted on May 13, 2008
In a decision last week, the Federal Circuit vacated a district court's grant of summary judgment of noninfringement of one patent and affirmed summary judgment of noninfringement of another.  The determinations turned on the construction of one claim element in each patent...

Claim term construed by construing different term in specification deleted from claim

Posted on May 12, 2008
In a decision last week, the Federal Circuit affirmed-in-part and vacated-in-part a district court's summary judgment of noninfringement based on a revised claim construction of two claim terms.  The court, in somewhat of a departure from its typical practice, also construed one additional term that appeared likely to be relevant on remand, but which did not form the basis for the summary judgment ruling...

Hybrid vehicle patent not infringed; invalidity issues need not be reached on appeal from ITC

Posted on May 12, 2008
In an appeal from the International Trade Commission, the Federal Circuit affirmed the Commission's determination of noninfringement of a patent.  The court, however, did not consider the ITC's finding of nonenablement on appeal.  While in the context of a district court case a counterclaim for invalidity is not mooted by a finding of noninfringement, the court held that because invalidity can only be raised at the ITC as an affirmative defense, the court was not required to consider the issue of indefiniteness on appeal once it had affirmed the finding of noninfringement...

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District court's claim construction too narrow, but noninfringement finding affirmed anyway

Posted on May 07, 2008
In a decision yesterday, the Federal Circuit held that a district court construed a claim limitation too narrowly.  However, even under the broader construction, summary judgment was still appropriate, because there was no genuine issue of fact that the accused method still did not practice that element, either literally or under the doctrine of equivalents...

USPTO files notice of appeal in claim and continuation rules case

Posted on May 07, 2008
As expected, this morning the USPTO filed a notice of appeal to the Federal Circuit in the lawsuit challenging its new claim and continuation rules.  The USPTO will seek reversal of the district court's order finding the new rules exceeded the USPTO's rulemaking authority...

Thursday at the Federal Circuit: In re Bilski oral arguments on scope of patentable subject matter

Posted on May 06, 2008
This Thursday, the Federal Circuit will hear oral arguments en banc in In re Bilski (No. 2007-1130), a case that will help define the scope of patentable subject matter.  Numerous amicus briefs have been filed in the case, and perhaps most interestingly, two of the amici, Bank of America and Regulatory DataCorp, have been granted permission to participate in the oral arguments...

What's new at the USPTO: Markush rules comments, new PPH, and pre-first action interview pilot

Posted on May 02, 2008
There have been a few new things relevant to the USPTO in the past couple of weeks that we haven't had a chance to talk about.  They include more comments regarding the proposed rules regarding Markush claims, a new Patent Prosecution Highway with the European Patent Office, and a pilot program where patent applicants would be able to have an interview to discuss a proposed first office action with the examiner before the action issues...

Offer of judgment providing full recovery mooted case, preventing opinion regarding spoliation

Posted on May 01, 2008
In a decision Tuesday, the Federal Circuit vacated a district court's order denying a declaratory judgment plaintiff attorney fees, but including a scathing description of alleged spoliation by the patentee/DJ defendant.  The Federal Circuit held that the district court's decision was an improper advisory opinion, and therefore vacated with instructions to dismiss...

Elements of infringement claim not jurisdictional; "sale" occurs at location of buyer and seller

Posted on April 29, 2008
In a decision yesterday, the Federal Circuit affirmed a district court's denial of the defendant's motion to dismiss for lack of subject matter jurisdiction.  The court also denied the defendant's post-verdict motion for judgment as a matter of law...

Two district courts, one correct claim construction; $103 million damage award vacated

Posted on April 25, 2008
In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction.  The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid...

Quality of investigation irrelevant to whether claims objectively baseless

Posted on April 25, 2008
In a Wednesday decision, the Federal Circuit affirmed a district court decision that a patent holder's communications with a competitor's customers that the competitor's products were infringing were not objectively baseless, and therefore could not support state law tort claims of unfair competition, intentional interference with contractual relations, interference with prospective economic advantage, and trade libel...

Supreme Court asks for government's view on whether it should hear sovereign immunity waiver case

Posted on April 22, 2008
In an order yesterday, the Supreme Court asked the Solicitor General's office to file a brief providing the government's views on whether it should grant certiorari in Biomedical Patent Management Corp. v. California Department of Health Services (No...

Covenant not to sue insufficient to defeat DJ jursidiction because of Hatch-Waxman issues

Posted on April 21, 2008
In a recent decision, the Federal Circuit addressed the issue of declaratory judgment jurisdiction in the context of the Hatch-Waxman Act. The court found that a unilateral covenant not to sue on a patent does not defeat declaratory judgment jurisdiction because there is still a "restraint on the free exploitation of non-infringing goods...

Patentee could not rebut presumption of estoppel; noninfringement finding affirmed

Posted on April 21, 2008
In a decision Friday, the Federal Circuit affirmed a district court decision holding that application of the doctrine of equivalents was barred as the Festo presumptions had not been rebutted.  The court noted that the patentee did not show that the alleged equivalent was unforeseeable at the time of making the narrowing amendment (which was the cancellation of an independent claim and rewriting a dependent claim into independent form) to the claims or that the narrowing amendment bore no more than a tangential relation to the alleged equivalent, the Federal Circuit upheld the district court's finding of noninfringement...

License under method patent not limited to use with licensor's products absent express limitation

Posted on April 18, 2008
In a decision Wednesday, the Federal Circuit affirmed-in-part, vacated-in-part, and reversed-in-part a district court's decision regarding two patents.  The district court held the broadest claims of both patents invalid and not infringed, and dismissed claims of inequitable conduct relating to the patents...

Assignee of patent not bound by previous assignee's agreement to arbitrate

Posted on April 17, 2008
In a decision yesterday, the Federal Circuit affirmed a finding by a district court that a party may not be compelled to arbitrate as provided in a patent license agreement when the party was not a signatory party to the agreement but merely an assignee of the patent covered by the agreement...

Party defaulting before district court and enjoined cannot attack registration via cancellation

Posted on April 17, 2008
In a decision this week, the Federal Circuit held that a party against whom a default judgment was entered in a trademark infringement case before a district court cannot thereafter petition to cancel the registration at issue before the TTAB.  The TTAB held the claim barred by res judicata...

Preamble not limiting when duplicative of claim limitations and not added to overcome rejection

Posted on April 16, 2008
In a recent decision, the Federal Circuit held that a district court erred in its construction of several claim terms in a patent, and as a result, vacated the district court's summary judgment of noninfringement and no invalidity.  The court affirmed the district court's decisions regarding several other issues, including laches, inequitable conduct, and inventorship...

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

Posted on April 14, 2008
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 art...

Patent Reform once again dead in the water?

Posted on April 14, 2008
Negotiations on a compromise version of the Patent Reform Act of 2007 (S.1145) broke down late last week, and now it appears that the bill may not be considered before the full Senate before its next recess in May, if at all.The breakdown occurred over the controversial damages apportionment provision in the bill...

Eleventh Circuit: eBay may eliminate presumption of irreparable harm in trademark cases

Posted on April 14, 2008
In a recent decision, the Eleventh Circuit vacated a district court's injunction against the use of a competitor's trademarks in the meta tags of a defendant's website.  The court held that while the plaintiffs had shown likelihood of success on both their trademark infringement and false advertising claims, because the district court relied on a presumption of irreparable harm to support its injunction, the injunction must be vacated...

Wal-Mart learns a lesson in copyright licensing the hard way

Posted on April 10, 2008
A story in yesterday's Wall Street Journal (via Bill Patry) illustrates how important it is for parties to a transaction to know what they're getting up-front.Starting way back in the 1970s, Wal-Mart hired an outside company, Flagler Productions, to document various aspects of Wal-Mart's operations...

Denial of injunction against sending letters asserting infringement affirmed

Posted on April 10, 2008
In a decision Tuesday, the Federal Circuit affirmed the denial of a preliminary injunction seeking to prevent a patentee from representing to the defendant's customers that the defendant's product potentially infringed the plaintiff's patent...

If ordinary meaning of claim term does not resolve disputed construction, court must construe term

Posted on April 10, 2008
In a decision last week, the Federal Circuit vacated and remanded a jury's finding of willful infringement case back to a district court, based on errors in claim construction and application of the doctrine of equivalents.  The district court's original Markman hearing determined that no construction was necessary for a particular claim term, "only if," whose scope was disputed by the parties...

Same claim term can be interpreted differently in the same claim if specification warrants

Posted on April 09, 2008
In a decision last week, the Federal Circuit decided a case addressing the limitations of what constitutes "insolubly ambiguous" claim terms in order to amount to indefiniteness.  The district court held the asserted claims invalid because they impermissibly mixed two statutory classes of subject matter, as well as because they required construing the same term differently in the same claim for the claims to make sense...

Federal Circuit: And can mean or, if it makes the claim make sense

Posted on April 08, 2008
In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent.  The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or...

No April Fools joke: Continuation and claim limit rules held invalid; permanently enjoined

Posted on April 01, 2008
In a ruling today regarding the parties' motions for summary judgment in the consolidated cases challenging the USPTO's new claim and continutation rules, Judge Cacheris ruled the rules were invalid, and permanently enjoined their enforcement...

Sixth Circuit: Partial fees to copyright defendant affirmed given plaintiff's litigation tactics

Posted on April 01, 2008
In a decision last week, the Sixth Circuit affirmed an award of partial attorney fees to a defendant in a copyright case.  The plaintiff sued multiple defendants, alleging copyright infringement under numerous theories.  One such theory was that receipt of royalties from the sale of infringing music rendered a party liable for the underlying infringement...

Computer-implemented means-plus-function claim invalid when no algorithm disclosed in specification

Posted on March 31, 2008
In a decision Friday, the Federal Circuit affirmed a final judgment of invalidity of all claims of a patent indefinite.  The claims had several means-plus-function clauses that were computer-implemented, however no algorithms for implementing the claimed functions were disclosed in the specification...

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