Intellectual Property Law

Nondisclosure of test results disclosed to testifying expert results in sanctions, but not dismissal

Posted on April 09, 2009
In a recent decision, the Federal Circuit affirmed-in-part and reversed-in-part a district court's ruling sanctioning the plaintiffs and their attorney in a case both monetarily and by striking the plaintiffs' pleadings.  The sanctionable conduct was the withholding of certain test results of the allegedly infringing product that arguably showed the product did not infringe...

Board's determination of priority, while "very close call," supported by substantial evidence

Posted on April 08, 2009
In a recent decision, the Federal Circuit affirmed a decision of the Board of Patent Appeals and Interferences awarding priority of invention to the senior party in an interference proceeding.  The Board held there was sufficient corroborating evidence of an inventor's testimony that the senior party appreciated its reduction to practice worked and met the key limitation of the interference count...

Kubin decided: Federal Circuit provides guidance for application of KSR in biotechnology

Posted on April 03, 2009
Today the Federal Circuit decided the appeal in In re Kubin, a case dealing with how the Supreme Court's KSR decision will apply in the field of biotechnology.  The decision is available here.  We previously blogged about the BPAI decision here and the Federal Circuit's oral arguments here...

Patent Reform Act of 2009 back before Senate Judiciary Committee today to consider compromise

Posted on April 02, 2009
Today at 10:00 Eastern time the Senate Judiciary Committee will hold an executive business meeting to discuss the Patent Reform Act of 2009.  The committee will consider some proposed amendments that represent a compromise on several key issues that have been points of contention over the course of the past several years when patent reform has been on the legislative agenda...

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Public use can't be experimental if not for purposes of the patent application

Posted on April 02, 2009
In a decision last week, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity of a patent and summary judgment to the defendant on the Plaintiff's false advertising claims. The defendant asserted the patent was invalid as obvious and by virtue of a prior public use...

Today's Federal Circuit practice tip: don't misrepresent the record or the law

Posted on March 31, 2009
In a recent decision, the Federal Circuit awarded sanctions against the plaintiff-appellant for filing and pursuing a frivolous appeal against one of four defendant-appellees.  The court observed the plaintiff-appellant failed to explain how the district court erred in its determination that this defendant did not infringe and also made misrepresentations of the record and law in its briefing on appeal...

Summary judgment of validity reversed; predictable variation of prior art obvious as a matter of law

Posted on March 30, 2009
In a decision last month, the Federal Circuit reversed a district court's summary judgment to the plaintiff.  The district court had awarded damages after granting summary judgment of "validity" and infringement. While the Federal Circuit agreed with the district court's construction of a disputed claim term, the court held the asserted claims were obvious as a matter of law...

Fourth Circuit: OBX geographically descriptive with no secondary meaning; noninfringement affirmed

Posted on March 30, 2009
In a decision last month, the Fourth Circuit affirmed a district court's grant of summary judgment to the defendant in a trademark case.  The mark at issue was OBX, which was an acronym coined to be short for the Outer Banks area of North Carolina...

Combining two embodiments in same prior art patent "does not require a leap of inventiveness"

Posted on March 30, 2009
In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law of obviousness.  A jury held the claim at issue was not obvious, and the district court denied the defendant's post-verdict motion for judgment as a matter of law on the issue...

Ninth Circuit: Sufficient evidence of fraud to defeat summary judgment on Walker Process claim

Posted on March 27, 2009
In a recent decision, the Ninth Circuit addressed the antitrust implications of so-called "reverse payments" between brand name and generic pharmaceutical companies.  A health care provider brought suit against the two companies, alleging their agreement to delay the introduction of a generic pharmaceutical (which involved payment to the generic manufacturer of $4...

Federal Circuit grants mandamus ordering transfer of case from Eastern District of Texas

Posted on March 25, 2009
In a recent decision, the Federal Circuit granted a petition for a writ of mandamus after a district court denied transfer of the case.  The defendants/petitioners had been denied transfer of a patent case from the Eastern District of Texas (a venue perceived to be plaintiff-friendly in patent cases) to the Southern District of Ohio, where two of the three defendants were located...

Patent lawyer without expertise in relevant field cannot testify on infringement, invalidity

Posted on March 24, 2009
The Federal Circuit recently reversed a district court's post-verdict grant of judgment as a matter of law of nonobviousness, applying the KSR obviousness standard and addressing the requirements for expert testimony for legal conclusions of obviousness...

Integrating infringing component into larger product does not escape contributory infringement

Posted on March 24, 2009
In a recent decision, the Federal Circuit affirmed a district court's grant of summary judgment of obviousness, but vacated and remanded the summary judgment of no contributory or inducing infringement of two other patents in suit related to recordable optical disk drive technology...

Prior art disclosure of compound does not anticipate substantially separated enantiomer

Posted on March 23, 2009
In a recent decision, the Federal Circuit affirmed a district court's determination, after a bench trial, that the asserted claim of a patent had not been proven anticipated or obvious.  The district court held that while the prior art showed the chemical structure of the claimed compound, it did not describe the separation of the two enantiomers of the compound, nor did it describe the appropriate salt form to use in tableting the compound...

Ninth Circuit: Trademark claim against tribal corporation does not confer tribal court jurisdiction

Posted on March 23, 2009
In a recent decision, the Ninth Circuit reversed a district court's grant of a motion to stay federal trademark claims against Indian tribal defendants pending a determination of jurisdiction by a tribal court.  The trademark claims were for alleged passing off of cigarettes on the Internet, on the reservation of another tribe, and elsewhere...

Supreme Court of Canada tightens obviousness standard

Posted on March 23, 2009
The Supreme Court of Canada recently made significant changes to its obviousness standard for patentability. The case addressed a dispute arising between the brand-name pharmaceutical manufacturer, Sanofi, and the Canadian generic manufacturer, Apotex...

Failure to disclose patents to SSO results in unenforceabilty against products using standard

Posted on March 23, 2009
In a recent decision, the Federal Circuit affirmed-in-part a district court decision that a patentee had breached a duty to disclose relevant video-compression technology patents while participating in a joint video team standards-setting organization (SSO)...

Continuation rules appeal decided; continuation limit invalid; RCE limit and ESD requirements valid

Posted on March 20, 2009
This morning the Federal Circuit released its opinion in Tafas v. Doll (formerly Tafas v. Dudas), the case addressing the validity of the USPTO's claim and continuation rules.  The court holds all of the rules at issue are procedural rather than substantive, reversing the district court on this issue...

Reliance on initial expert for rebuttal sufficient to defeat summary judgment

Posted on March 20, 2009
In a decision Tuesday, the Federal Circuit reversed grants of summary judgment in favor of both parties.  The defendant was granted summary judgment of noninfringement, and the plaintiff (and counterclaim defendant) was granted summary judgment on the grounds of no marking under 35 U...

Explanation of prior art element in dependent claim insufficient to confer inventor status

Posted on March 09, 2009
In a decision Thursday, the Federal Circuit reversed a summary judgment of dismissal for lack of standing by the District Court for the Eastern District of Michigan.  The district court held that one of the defendant's employees was a coinventor of the patent-in-suit, and because he had not joined as a plaintiff, the plaintiffs did not have standing to sue...

Claim that infringing product was defendant's "innovation" cannot support section 43(a) claim

Posted on March 06, 2009
In a decision last month, the Federal Circuit reversed a district court's denial of judgment as a matter of law from a jury award of $8,054,579 under § 43(a) of the Lanham Act.  The plaintiff held a patent on a type of basketball, and the defendant (against whom summary judgment of infringement was granted) advertised their basketball was their "innovation...

Failure to raise KSR post-trial but pre-judgment results in waiver

Posted on March 05, 2009

Tenth Circuit: Insufficient proof of access dooms copyright infringement claim

Posted on March 04, 2009

Patent reform back again for 2009

Posted on March 04, 2009

Covenant to sue that does not cover future infringement insufficient to defeat DJ jurisdiction

Posted on March 03, 2009

United States did not waive immunity for copyright infringement claim brought by prisoner

Posted on February 05, 2009
In a recent decision, the Federal Circuit held the Court of Federal Claims correctly dismissed a copyright infringement suit against the United States for lack of subject matter jurisdiction.  The plaintiff is a federal prisoner who created various coyprightable works while in federal prison...

Scope of prior art teachings incorrect; summary judgment of obviousness reversed

Posted on February 05, 2009
In a recent decision, the Federal Circuit reversed a district court's summary judgment of obviousness.  The patent related to dessicant packages.  The district court held a prior art reference taught all limitations of the claims with the exception of the type of  absorbent material contained in the package, and that, under KSR, it would be obvious to one of ordinary skill in the art to substitute one material for the other...

Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?

Posted on January 11, 2009
Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious.  This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so how the Federal Circuit comes out on the issue has the potential to greatly affect examination of biotechnology applications at the USPTO...

Grant of stay while preliminary injunction motion pending abuse of discretion

Posted on January 05, 2009
In a recent decision, the Federal Circuit found that a district court's grant of a stay pending inter partes reexamination without considering the patentee's pending motion for a preliminary injunction was an abuse of discretion. The Federal Circuit held the grant of the stay effectively denied the preliminary injunction motion, thereby making the stay order appealable...

Existence of other licenses under patent does not preclude finding of irreparable harm

Posted on January 05, 2009
In a decision Tuesday, the Federal Circuit affirmed a district court's grant of a permanent injunction.  The district had previously granted a permanent injunction after a jury found willful infringement.  In a previous appeal, the Federal Circuit affirmed the finding of willful infringement, but vacated the permanent injunction because the district court did not consider the four-factor test mandated by the Supreme Court's decision in eBay v...

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