Intellectual Property Law

En banc Federal Circuit to address potential patent misuse issues in license practices

Posted on October 20, 2009
The Federal Circuit has agreed to hear en banc an interesting issue with regard to the potential for patent misuse in licensing.  The case is Princo Corp. v. ITC.  At issue is the patent pool related to the technology used for CD-R and CD-RW discs...

Attendance at single trade show to display infringing product sufficient for personal jurisdiciton

Posted on October 20, 2009
In a case of first impression for the Federal Circuit, the court addressed the issue of how to apply Federal Rule 4(k)(2) (the Federal Court's long-arm statute) to a defendant.  The court, in agreement with several other circuits, that a Rule 4(k)(2) analysis is appropriate when (1) the plaintiff's claim arises under federal law, (2) the defendant is not amenable to jurisdiction in any individual state, and (3) the exercise of jurisdiction comports with due process...

Dependent claim can't be obvious when indepdendent claim is not; verdict vacated as inconsistent

Posted on October 19, 2009
In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness.  The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness:  the jury held a dependent claim obvious but the independent claim from which it depends not obvious...

Claim and continuation rules dead: thousands of practitioners breathe easier

Posted on October 14, 2009
In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations.  This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued...

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Manuscript filed with copyright office not necessarily publicly available as of filing date

Posted on September 25, 2009
In a decision Tuesday, the Federal Circuit held the USPTO had not provided sufficient evidence that an inventor's manuscript was publicly accessible, and therefore available as prior art under § 102(b), before the critical date of the application...

Seventh Circuit: Notice requirement to Copyright Office when registration refused not jurisdictional

Posted on September 22, 2009
In a recent decision, the Seventh Circuit affirmed a district court's grant of summary judgment that a plaintiff could not prevail in her copyright claim.  The court first addressed whether the plaintiff complied with the necessary procedural requirements to have her claim heard...

Programming note

Posted on September 22, 2009
As many have surely noticed, while we have covered the major issues that have arisen, the pace of posts here at Filewrapper has slowed down of late. This is a reflection of the recent demands of the actual practice of law. The good news is the blogging pace should pick up soon, and look for the rate of posts to be back at its normal level in the coming weeks.

Today's eCommerce lesson: There's no upside to using others' trademarks in your website meta tags

Posted on September 22, 2009
Those who have a passing familiarity with website design are probably familiar with the concept of meta tags.  Meta tags are pieces of data included in the HTML code of a webpage that provide information regarding the content of the page.  You can view the code of a webpage you are visiting by clicking the "view" menu and, in IE, selecting "source," or in Firefox, selecting "page source...

USPTO issues new section 101 guidelines for use until Supreme Court decides Bilski v. Doll

Posted on August 28, 2009
This week the USPTO has issued new guidelines to patent examiners on how to handle § 101 patentable subject matter issues in light of the Federal Circuit's ruling in In re Bilski.  The guidelines are distilled into two flow charts and an instructional memo to examiners on how to conduct the analysis...

Federal Circuit to consider whether a separate written description requirement exists in section 112

Posted on August 23, 2009
In an en banc order Friday, the Federal Circuit announced it will rehear Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. en banc to consider whether there is a written description requirement in § 112 separate and apart from the enablement requirement...

USPTO announces e-Office Action program for patent applications

Posted on July 22, 2009
In a press release, the USPTO announced the availability of the e-Office Action program for patent applications.  Under the program, applicants or attorneys may sign up to receive an email notice when an office action is mailed in an application, and can then download the office action from Private PAIR...

Digital Britain: The UK Government's vision for a 21st century digital economy

Posted on July 07, 2009
Last month, the UK Department for Culture, Media, and Sport released Digital Britain, a report regarding the future of communications infrastructure in the UK, how to deal with challenges of a digital economy (such as copyright infringement), and containing policy recommendations regarding how to move forward...

Federal Circuit to hear claim and continuation rule case en banc

Posted on July 06, 2009
In an order this afternoon, the Federal Circuit agreed to hear en banc Tafas v. Doll, the case challenging the USPTO's claim and continuation rules.  Back in March, a panel of the court held, in a 2-1 decision, the limits on continuation applications were invalid, but the remainder of the rules were not invalid, at least for the reasons given by the district court...

Three disputed claim terms, three revised constructions, one remand

Posted on June 23, 2009
In a recent decision, the Federal Circuit vacated and remanded a district court's judgment of noninfringement based on the parties' stipulation after claim construction.  The district court construed three claim terms in a way that the parties agreed rendered all accused products noninfringing, and the plaintiff appealed...

Obama to nominate David Kappos for USPTO director

Posted on June 18, 2009
According to the website of Senator Patrick Leahy, President Obama will nominate David J. Kappos to be the next Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent And Trademark Office.  The nomination does not yet appear on the White House's nominations and appointments page (Update:  here is the While House press release)...

When analyzing written description in interference, claims construed according to patent copied from

Posted on June 16, 2009
In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment in a § 146 action brought after an interference proceeding at the USPTO.  The district court agreed with the Board's decision to award priority to the senior party in the interference, granting the senior party's motion for summary judgment that its specification satisfied the written description requirement for the interference count...

Close but no cigar: ITC gets 4 of 5 claim constructions correct, but must reconsider 2 issues

Posted on June 15, 2009
In a recent decision, the Federal Circuit addressed a variety of claim construction, infringement, and validity issues in an appeal from the International Trade Commission.  After construing five disputed claim terms, the ITC held one of four representative products infringed, the remaining three did not infringe, and one claim invalid as anticipated...

In license agreement, right to "have made" implicitly granted with right to make

Posted on June 15, 2009
In a recent decision, the Federal Circuit affirmed a district court's dismissal of a patent licensor's claims for breach of a license agreement and patent infringement. The non-exclusive licensee arranged to have third parties manufacture the licensed product, but the product was sold by the licensee...

Federal Circuit clarifies how to analyze likelihood of success at preliminary injunction stage

Posted on June 08, 2009
The Federal Circuit Wednesday affirmed a district court's denial of preliminary injunction to the plaintiffs (a patentee and its licensee with a right to enforce the patent) in a design patent case. The district court held there was a substantial question regarding the validity of the patent that was not shown to lack substantial merit, and therefore the plaintiffs were not likely to succeed on the merits...

Supreme Court grants certiorari in Bilski

Posted on June 01, 2009
In an order today, the Supreme Court agreed to hear an appeal in Bilski v. Doll regarding the patentability of method claims.  Back in October, the Federal Circuit decided In re Bilski, adopting the "machine-or-transformation" test as the exclusive test to determine whether a method is drawn to patentable subject matter...

Insufficient enforcement activity in district by patentee leads to dismissal of DJ action

Posted on May 20, 2009
In a decision Monday, the Federal Circuit affirmed a district court's dismissal of a declaratory judgment action against a British patentee for lack of personal jurisdiction.  The facts of the case are similar to the Avocent case decided a few months ago...

Patentee's commercial sales not relevant for personal jurisdiction in DJ action

Posted on May 20, 2009
In a decision addressing personal jurisdiction in declaratory judgment actions, the Federal Circuit affirmed a district court's dismissal of an action against a foreign patent owner.  The plaintiff sought a declaration that two patents owned by a Taiwanese company were invalid and not infringed in the plaintiff's home forum, the Northern District of Alabama...

When compounds in a class have divergent properties, positional isomer not obvious

Posted on May 18, 2009
In a decision Wednesday, the Federal Circuit affirmed a district court's determination that the asserted claims in a pharmaceutical patent were not proven obvious.  As is common in pharmaceutical cases, the defendant filed an ANDA asserting the patent covering the compound and its use was invalid, and in the ensuing infringement suit admitted its proposed generic drug met the claim limitations...

Marketing methods not patentable subject matter: no machine or transformation

Posted on April 21, 2009
In a recent decision, the Federal Circuit applied the machine-or-transformation test from Bilski to affirm the rejection of all pending claims in a patent application by the Board of Patent Appeals and Interferences.  The claims at issue related to methods of marketing products and "paradigms" for marketing software...

Pirate Bay operators guilty of criminal infringement in Sweden; no webcast of US file sharing case

Posted on April 17, 2009
In the past day, there has been two interesting bits of news in the world of cases alleging copyright infringement by way of peer-to-peer file sharing.The first is that the individuals who operate and maintain the servers that host The Pirate Bay, the world's largest bittorrent tracker, were held to have committed criminal copyright infringement by a Swedish court...

Use of court-appointed expert not abuse of discretion, even when jury told of neutrality

Posted on April 16, 2009
In a recent decision, the Federal Circuit held it was not an abuse of discretion for a district court to retain an independent expert pursuant to Rule 706 to assist the jury in understanding the technology relating to a complicated electrical patent...

Estoppel applies to all added limitations in claims, including when present in unamended claims

Posted on April 15, 2009
In a decision Friday, the Federal Circuit affirmed a district court's grant of summary of no literal infringement and that prosecution history estoppel barred application of the doctrine of equivalents.  During prosecution of the patent, a total of three limitations from two different dependent claims were added to the asserted claim in separate amendments, although only two of the limitations were addressed by the applicant and examiner...

Disclosure of compounds without link to claimed method fails to meet written description requirement

Posted on April 14, 2009
In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law after a jury determined the asserted claims of an invention were not invalid under the written description requirement.  The court, however, affirmed the district court's determination of no inequitable conduct...

Second Circuit limits 1-800 Contacts; keyword advertising can be use in commerce

Posted on April 14, 2009
In a recent decision, the Second Circuit reversed a district court's grant of a motion to dismiss in a trademark infringement case.  The district court, relying on the Second Circuit's 2005 decision in 1-800 Contacts, Inc. v. WhenU.com, Inc...

Sales of products by party under unconditional covenant not to sue exhaust patent rights

Posted on April 13, 2009
In a decision Wednesday, the Federal Circuit affirmed a district court's finding that a patentee's claims for patent infringement were barred by patent exhaustion in view of a settlement agreement between the patentee and a previous defendant in an infringement suit...

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