Intellectual Property Law

Federal Circuit affirms USPTO's interpretation of inter partes reexamination statute

Posted on August 22, 2008
In a decision Tuesday, the Federal Circuit affirmed a district court's holding that the USPTO's interpretation of the inter partes reexamination procedure was correct, and therefore that all patent applications (other than reissue applications) filed after November 29, 1999 are eligible for inter partes reexamination, even if priority is claimed to an application filed before that date...

No case or controversy when patentee doesn't even know of potentially infringing product

Posted on August 21, 2008
In a decision last week, the Federal Circuit upheld a district court's decision that Article III jurisdiction did not exist in a case where a potential infringer was seeking a declaration of noninfringement.  The district court granted a motion to dismiss the under the Federal Circuit's pre-MedImmune reasonable apprehension of suit test, noting that there was no reasonable apprehension of suit...

Efforts to terminate infringement after notice of patent doesn't avoid damages

Posted on August 21, 2008
In a decision Tuesday, the Federal Circuit vacated a district court's grant of summary judgment of non-infringement of a patent on the basis of claim construction.  Specifically, the district court had improperly imported limitations from nonasserted claims into the asserted claims, resulting in an unduly narrow claim construction...

Today's lesson for litigators: make sure you present all your arguments to the district court

Posted on August 21, 2008
In a decision Tuesday, the Federal Circuit affirmed a district court's holding that two patents were invalid under the on-sale bar of 35 U.S.C. § 102(b).  The inventor filed a declaration during prosecution that the invention was reduced to practice before the critical date of the patents, and thereafter sold the claimed method, also before the critical date...

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Irreparable harm to exclusive licensee cannot support injunction; willfulness vacated post-Seagate

Posted on August 20, 2008
In a decision Monday, the Federal Circuit addressed a range of issues and ultimately affirmed a district court's denial of injunctive relief and, in light of the intervening Seagate decision, vacated and remanded the case for reconsideration regarding willfulness...

Roundup of recent USPTO federal register notices: patent agent practice, fees, new rules and more

Posted on August 17, 2008
It's been a busy few weeks in rulemaking at the USPTO, with several notices recently posted that deserve attention.  The notices relate to increases in fees for Fiscal Year 2009 because of the consumer price index, increases for PCT fees (and a correction), the scope of permissible practice of patent agents and changes to disciplinary procedures, the effective date of the currently-enjoined rules on applications with patentably indistinct claims, and the scope of foreign filing licenses, specifically as it relates to outsourcing patent application preparation outside the United States...

Federal Circuit: Breach of open source license conditions can lead to copyright infringement

Posted on August 16, 2008
In a recent decision, the Federal Circuit addressed some of the copyright issues involved with the open source movement.  Often open source software is distributed under a so-called copyleft license, which permits others to use the work, subject to certain restrictions...

BPAI: when prior art teaches away, expectation of success cannot support obviousness rejection

Posted on August 16, 2008
In a recent precedential decision by the Board of Patent Appeals and Interferences, the board reversed an Examiner's rejections based on double patenting, anticipation, and obviousness.  The Board held the Examiner inappropriately rejected the claims for double patenting because there was insufficient evidence to show the compositions claimed in the prior art possessed the viscosity level claimed in the current application or that they would be obvious variants...

Second Circuit: Remote DVR system does not infringe content providers' copyrights

Posted on August 13, 2008
In a decision last week, the Second Circuit reversed a lower court's grant of summary judgment holding that the defendant's remote-storage DVR system violated the plaintiffs' rights of reproduction and public performance.  The Plaintiffs were various content providers, and the defendant was a cable company...

Third Circuit: Evidence of secondary meaning must correspond to the asserted mark

Posted on August 08, 2008
In a decision Wednesday, the Third Circuit affirmed a district court's grant of summary judgment in a trademark case, finding the asserted mark not protectible as a matter of law.The district court granted summary judgment that the mark was generic...

FDA research safe harbor does not extend to devices not subject to FDA approval

Posted on August 07, 2008
In a decision Tuesday, the Federal Circuit affirmed a district court's holding of patent infringement on the basis that the "safe harbor" provision of the Hatch-Waxman Act, § 271(e)(1), did not insulate the accused activity from infringement and that the district court did not err in granting a judgment as a matter of law in favor the plaintiff on infringement and the defendant's invalidity defenses...

When exclusion order based on multiple patents, failure to appeal under each may render appeal moot

Posted on August 06, 2008
In a decision last week, the Federal Circuit affirmed the United States International Trade Commission's finding of infringement and validity.  The claims were brought under three patents that all claimed priority to a common parent application, and thus would ordinarily all expire on the same day...

USPTO proposes limitations on fax submissions and font size

Posted on August 06, 2008
In a Federal Register notice published today, the USPTO is proposing to limit the types of documents that may be submitted to the Office via fax, as well as mandating a larger font size in documents submitted to the Office.With regard to the fax limitation, the revised rules would prohibit most types of submissions from being sent to the USPTO via fax...

Finding of inequitable conduct without considering materiality vacated

Posted on August 06, 2008
In a decision on Friday, the Federal Circuit reversed a district court's summary judgment of invalidity and noninfringement and subsequent finding of inequitable conduct.  The court also vacated the district court's exceptional case finding and the associated award of attorney's fees...

Patry copyright blog is no more

Posted on August 03, 2008
It's a sad day in the blogosphere, as Bill Patry, author of Patry on Copyright and the Patry Copyright Blog, has announced he is shutting down his blog.  We've linked to Professor Patry's commentary on copyright law on many occasions, and his additional insight into copyright issues will be missed...

Arguments made distinguishing prior art spell doom for broader claim construction

Posted on July 27, 2008
In a decision last week, the Federal Circuit affirmed a district court's claim construction and related grant of summary judgment of non-infringement.The court affirmed the construction in part because the plaintiff's interpretation of the claim elements was at odds with the plaintiff's stance during the prosecution history...

Federal Circuit addresses scope of immunity waiver for copyright and DMCA claims

Posted on July 27, 2008
In a decision Friday, the Federal Circuit affirmed a decision from the United States Court of Federal Claims dismissing a copyright holder's claims for lack of jurisdiction on the ground that the Government had not waived sovereign immunity.  The suit arose from alleged copyright infringement and an alleged violation of the Digital Millennium Copyright Act of 1998 (DMCA)...

Federal Circuit provides more post-KSR guidance for obviousness for chemical compounds

Posted on July 24, 2008
In a decision Monday, the Federal Circuit affirmed a district court's decision finding asserted claims of a patent valid and enforceable.  Specifically, the court affirmed a finding that the asserted claims were nonobvious as a matter of law, and that the evidence did not support a finding of inequitable conduct...

Tenth Circuit: MedImmune declaratory judgment jurisdiction test applies in trademark cases

Posted on July 18, 2008
In a decision last week, the Tenth Circuit reversed a district court's decision that Article III jurisdiction did not exist over a declaratory judgment action in a trademark case.  At issue was whether a triable case or controversy within the meaning of Article III existed in declaratory judgment action regarding trademark infringement...

Purported inventor who waited eight years to file suit could not overcome presumption of laches

Posted on July 17, 2008
In a decision yesterday, the Federal Circuit upheld a district court's grant of summary judgment due to laches and applicable state statute of limitations in an inventorship case. The plaintiff, having waited more than eight years after finding out about the patents to file suit, claimed that an intervening reexamination should have reset the time for determining laches and that the defendant's "unclean hands" in failing to include the plaintiff as an inventor precluded the application of laches...

Adaptation of prior art bidding system to the web obvious under KSR and Leapfrog

Posted on July 17, 2008
In a decision Monday, the Federal Circuit reversed a district court's permanent injunction and denial of judgment as a matter of law in a patent infringement case.  A jury determined the asserted claims of the patent were not obvious and that the defendant willfully infringed, and awarded $38...

Consent judgment with no explanation of how claim construction affected noninfringement vacated

Posted on July 17, 2008
In a decision Tuesday, the Federal Circuit vacated a consent judgment entered by a district court and remanded the case for clarification. The district court entered a consent judgment, stipulated by the parties, stating the defendants' products did not infringe under the district court's claim construction of several terms, but that the plaintiff could still appeal the claim construction...

Ninth Circuit: Termination of rights allows Lassie to come home to author's heir

Posted on July 17, 2008
In a decision last week, the Ninth Circuit reversed a district court's denial of summary judgment in a copyright case.  The district court held the heir of an author had, by agreement, "given away" the termination right granted by 17 U...

Eleventh Circuit: Laches presumed not to apply in copyright case filed during limitations period

Posted on July 17, 2008
In a decision last week, the Eleventh Circuit affirmed in part and vacated in part a district court decision granting summary judgment in a copyright infringement action.  The central disagreement between the parties was over the scope of copyright protection in a book about sales techniques...

Seventh Circuit: Prevailing defendants should have greater presumption of fees in copyright cases

Posted on July 11, 2008
In a decision Wednesday, the Seventh Circuit reversed a district court's denial of attorney fees to a prevailing defendant in a copyright case.  The district court found that, as a matter of law, no copyright infringement occurred, but declined to award attorney's fees...

Reverse doctrine of equivalents still a losing argument at the Federal Circuit

Posted on July 11, 2008
In a decision Wednesday, the Federal Circuit affirmed a district court's finding of patent validity and patent infringement.  The Federal Circuit found no error in the district court's holding that the reverse doctrine of equivalents was inapplicable and that claim preclusion prohibited the defendant from raising other validity challenges...

En banc Eleventh Circuit reaffirms digital compilation of magazine archives a privileged revision

Posted on July 09, 2008
In a decision last week, the Eleventh Circuit en banc addressed the application of New York Times v. Tasini in the context of a comprehensive CD archive encompassing all National Geographic magazines from 1888 to 1996, called the Complete National Geographic...

First Circuit: Discovery rule not triggered in copyright case by parties' acrimonious split

Posted on July 07, 2008
In a recent decision, the First Circuit reversed a district court's decision dismissing a copyright infringement claim on statute of limitation grounds.   The main issue was whether the statute of limitations for copyright infringement claims barred an architectural firm's action against a former client...

U.S. Copyright Office begins online registration system today

Posted on July 01, 2008
Today the U.S. Copyright Office will officially begin accepting registrations for some works online.  The works that may be registered online are "basic claims" for literary, visual arts, and performing arts works (including motion pictures, sound recordings and single serials)...

Failure to consider evidence of good faith leads to reversal of inequitable conduct finding

Posted on June 25, 2008
In a decision last week, the Federal Circuit affirmed a district court's finding of no infringement and invalidity for obviousness, and reversed the district court's finding of unenforceability due to inequitable conduct.The Federal Circuit, citing KSR, noted that an obviousness analysis can take account the inferences and creative steps that a person of ordinary skill in the art would employ, and held that there was a only small logical gap between the prior art and the claim at issue that could be closed by a person of ordinary skill in the art pursuing known options within his or her technical grasp and therefore the claim was obvious...

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