Intellectual Property Law

Federal Circuit requires agency relationship or contractual obligation for joint infringement

Posted on January 04, 2011
To establish infringement of a method claim, a patent holder must show that all of the recited steps in the claim are performed by a defendant.  If the recited steps are not performed by a single entity, but by the defendant acting in concert with another party, the patent holder may still show 'joint infringement' if the defendant controls or directs the activities of another party...

Federal Circuit determines that method for optimizing dosing of medication is patent eligible

Posted on December 21, 2010
The Federal Circuit on Friday looked at the issue of what constitutes an attempt to patent a natural phenomenon.   In Prometheus Laboratories, Inc. v. Mayo Collaborative Services, the Federal Circuit determined that a method for optimizing the dosage of a medication was not directed to a natural phenomenon and therefore was patent-eligible subject matter within the meaning of § 101 of the Patent Act...

Bayh-Dole Patent Ownership Dispute to be heard by Supreme Court

Posted on November 08, 2010
Last week, the Supreme Court announced it will review the Federal Circuit decision in Stanford v. Roche, addressing patent ownership under the Bayh-Dole Act, after granting Stanford's petition for a writ of certiorari. The Court will decide an interesting patent ownership dispute involving the contractual obligation of a University inventor to assign rights to the University and the same inventor's prior assignment of future rights to a company (which eventually became Roche)...

Supreme Court hears arguments today regarding first sale doctrine and international purchases

Posted on November 08, 2010
This morning the Supreme Court will hear oral argument in Costco Wholesale Corp. v. Omega S.A., a case regarding the potential international scope of the first sale doctrine.  Costco lawfully purchased authentic Omega watches abroad and imported them to the United States for sale in its stores...

To access this complete feed in the blog feed reader login or register for free.

Inventor's prior art patents and prosecution history lead to reversal of claim construction

Posted on October 26, 2010
In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of noninfringement and invalidity based on inadequate written description.  The issue of infringement was reversed based on the district court's incorrect construction of a critical claim limitation...

Supreme Court to hear case regarding proper standard for proving inducing infringement under 271(b)

Posted on October 12, 2010
In an order today, the Supreme Court agreed to hear a case regarding the necessary intent for inducing infringement under 35 U.S.C. § 271(b).  The case is Global-Tech Appliances, Inc. v. SEB S.A., docket number 10-6.  The specific question presented is:Whether the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U...

Compliance with industry standards can be used to show patent infringement

Posted on September 27, 2010
In Fujitsu et al v. Netgear, the Federal Circuit held compliance with an industry standard can be sufficient evidence to establish patent infringement.  However, this rule only applies when the only way to adhere to the industry standard is to infringe the asserted patent, such that any product that complies with the standard infringes...

Federal Circuit decisions address false marking statute in Solo Cup and Brooks Brothers cases

Posted on September 27, 2010
The Federal Circuit continues to address false marking cases. The court's recent decisions stress how important it is for patentees to monitor and update their labeling and other marking activities, particularly as patents expire.In June, the court affirmed a summary judgment decision in favor of Solo Cup related to the company's practice of marking patents on beverage cup lids, and addressed whether each decision to mark or each article falsely marked is an act of false marking under the statute...

Preamble held not limiting because body of claim sets forth complete invention

Posted on September 20, 2010
In a recent decision, the Federal Circuit reversed a decision of the United States District Court for the District of Massachusetts. The district court had granted summary judgment of noninfringement to the defendant finding that the defendant's accused device did not perform a function found only in the preambles of the asserted claims...

Ninth Circuit: AutoCAD purchasers are licensees, so first sale doctrine does not apply to resale

Posted on September 15, 2010
In a decision last week, the Ninth Circuit held the purchaser of a copy of AutoCAD software was not an owner of the copy, but instead a licensee.  As a result, the purchaser did not have the protection of the first sale doctrine (codified in 17 U...

USPTO publishes interim guidance for assessing patentable subject matter post-Bilski

Posted on July 27, 2010
In a Federal Register notice today, the USPTO has published interim guidance regarding how examiners are to assess whether an application's patent claims fall within the scope of patentable subject matter defined in § 101 in light of the Supreme Court's decision in Bilski...

Copyright Office issues new DMCA exemptions: iPhone jailbreaking, noncommercial use of DVD snippets

Posted on July 26, 2010
Every three years, the United States Copyright Office seeks proposals for exemptions from the Digital Millennium Copyright Act ("DMCA").  As part of the DMCA, it became unlawful to circumvent access control measures copyright holders used to secure their copyrighted works...

Supreme Court: Business method patents survive, but barely; Bilski's claims unpatentable

Posted on June 29, 2010
Yesterday, the Supreme Court decided Bilski v. Kappos, the most recent case at the Court probing the boundaries of patentable subject matter under § 101.  Details of the underlying facts of the Bilski case may be found in our post on the Federal Circuit's en banc decision here...

Bilski decided

Posted on June 28, 2010
This morning, the Supreme Court handed down its opinion in Bilski v. Kappos.  The court affirmed the Federal Circuit's decision. We'll have more detailed analysis soon. To read the opinion, click here.

USPTO proposes tiered system for patent application examination speed

Posted on June 03, 2010
In a press release today, the USPTO has proposed a tiered examination system where applicants could choose to pay a higher fee in exchange for quicker examination of an application or could opt for a delay of up to 30 months before docketing for examination...

Ninth Circuit: Filing copyright application sufficient to bring suit under Section 411(a)

Posted on June 03, 2010
In a decision last week, the Ninth Circuit held the filing of an application for registration with the copyright office is sufficient to meet the requirement that a copyright be "registered" before suit is brought under 17 U.S.C. § 411(a)...

Supreme Court: NFL collective licensing of trademarks not immune from Section 1 antitrust scrutiny

Posted on May 26, 2010
Monday the Supreme Court unanimously held the NFL's practice of collectively licensing the trademarks of all 32 individual teams is not immune from antitrust scrutiny under Section 1 of the Sherman Act.  The NFL argued that because the marks are all licensed through a single entity, NFL Properties, there was no "contract, combination, ...

Another issue headed for en banc review by the Federal Circuit: How to assess redesigned products

Posted on May 17, 2010
In an order Friday, the Federal Circuit granted en banc review of its second case in the past three weeks and its third over the past three months.  This time it's a case involving Tivo relating to the contempt proceedings against Echostar relating to Tivo's DVR patents...

Federal Circuit to consider overhaul of inequitable conduct standards en banc

Posted on April 26, 2010
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...

En banc Federal Circuit reaffirms written description requirement is separate from enablement

Posted on March 24, 2010
Monday the Federal Circuit  released its en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lily & Co., where the court addressed whether 35 U.S.C. § 112  has a written description requirement separate and apart from the enablement requirement...

False marking applies on a per article basis, not a per decision to mark basis

Posted on March 03, 2010
In Forest Group v. Bon Tool Co., the Federal Circuit held that the false marking statute applies on a per article basis, rather than on a per decision to mark basis.  The Federal Circuit reversed the district court, which had imposed a fine of $500 for a single decision to falsely mark a shipment of stilts as patented when they were not patented, and instructed the district court to recalculate the fine based on the total number of stilts that were falsely marked...

Supreme Court: Registration requirement of 411(a) not jurisdictional for copyright claims

Posted on March 02, 2010
Today the Supreme Court decided Reed Elsevier, Inc. v. Muchnick, a case regarding whether the registration requirement of 17 U.S.C. § 411(a) is jurisdictional or a claim processing rule. The Court held the requirement to be nonjurisdictional. The case involves a class action for copyright infringement by freelance journalists based on republication of works in electronic databases that originally appeared in, for example, newspapers...

Federal Circuit to consider en banc whether new evidence may be introduced in a section 145 action

Posted on February 18, 2010
In an order yesterday, the Federal Circuit has agreed to consider the scope of evidence to be considered in an action filed under 35 U.S.C. § 145 to obtain review of a decision of the Board of Patent Appeals and Interferences.  The case is Hyatt v...

Developments up to second-filed application relevant to show no double patenting

Posted on February 17, 2010
The Federal Circuit has clarified the relevant timeframe for purposes of determining whether two claimed inventions are patenably distinct or would result in impermissible double patenting.  The court held "the relevant time frame for determining whether a product and process are 'patentably distinct' should be at the filing date of the secondary application...

If there are no sources of proof in the Eastern District of Texas, expect to be transferred

Posted on December 15, 2009
After the Fifth Circuit's Volkswagen and the Federal Circuit's TS Tech decisions, potential patent plaintiffs should be getting the message:  Don't file in the Eastern District of Texas unless there are actually some sources of proof there...

Common sense held sufficient to invalidate claims as obvious on summary judgment

Posted on December 14, 2009
If anyone needed further proof that patents are more easily held obvious after KSR, look no further.  The Federal Circuit held that a patent directed to a method of email marketing with improved efficiency was obvious based on the "common sense" of one in the art...

Are patent holding companies subject to different DJ jurisdiction standards than others?

Posted on December 14, 2009
According to the Federal Circuit, the answer to this question appears to be "yes."  The court reversed a district court's dismissal of a declaratory judgment action against a patent holding company (or non-practicing entity (NPE), sometimes pejoratively referred to as a patent troll)...

USPTO to allow accelerated examination for "green" applications without examination support document

Posted on December 08, 2009
In a press release yesterday, the USPTO announced it was beggining a pilot program to permit accelerated examination of patent applications directed to "green" technologies. The announcement came on the same day that the EPA announced it considers greenhouse gases a threat to public health and the environment...

Highlights from oral arguments in Bilski v. Kappos

Posted on November 11, 2009
On Monday, the Supreme Court heard oral argument in Bilski v. Kappos in an effort to determine the proper test to be applied to determine whether a claim is patentable subject matter under § 101.  The oral argument transcript is available from the Court's website here...

Fourth Circuit: Plagiarism detection service is fair use of students' copyrighted papers

Posted on October 26, 2009
In a recent decision by the Court of Appeals for the Fourth Circuit, the court decided that the anti-plagiarism service provided by iParadigms at turnitin.com, did not constitute copyright infringement of high school students' papers submitted via the service...

Bloggers, promote your law blog by nominating your blog for inclusion in USLaw.com's Law Blog Directory and RSS Reader. Benefits described.