Intellectual Property Law

Eleventh Circuit: Similarity of architectural plans depends largely on arrangement of features

Posted on January 02, 2009
In a recent decision, the Eleventh Circuit affirmed a district court's grant of summary judgment of non-infringement in an architectural copyright case. The appellant had argued that the district court had effectively heightened the standard for infringement by performing an element-by-element comparison focusing on the differences between two floor plans...

On appeal, BPAI cannot group claims that do not share a common reason for rejection

Posted on January 02, 2009
In a recent decision, the Federal Circuit affirmed a distirct court's vacatur of a decision of the Board of Patent Appeals and Interferences.  In an appeal of rejections in twelve different applications involving approximately 2,400 claims, the Board only addressed the rejection of 21 "represntative" claims pursuant to 37 C...

Use of mechanism in claim without more may result in means-plus-function interpretation

Posted on December 18, 2008
In a decision Monday, the a href=http://www.cafc.uscourts.gov/Federal Circuit/a affirmed a district court#39;s claim construction and related judgment of noninfringement. nbsp; The decision focused on the issue of claim construction in means plus function claims...

Todays prosecution practice tip: dont use the phrase the present invention in the specification

Posted on December 18, 2008
pIn a decision last week, the a href=http://www.cafc.uscourts.gov/ title=United States Court of Appeals for the Federal CircuitFederal Circuit/a affirmed a district court#39;s claim construction and its related summary judgment of noninfringement.nbsp; The district court held the applicable claim term was narrower than the quot;lay understandingquot; of the term, based on the specification...

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District courts order dismissing the action with prejudice held to be nonfinal due to counterclaims

Posted on December 17, 2008
In a decision Thursday, the a href=http://www.cafc.uscourts.gov/ title=United States Court of Appeals for the Federal CircuitFederal Circuit/a affirmed a district court#39;s denial of a preliminary injunction, and held it did not have jurisdiction over the remainder of the appeal because there was no final judgment...

Federal Circuit invalidates Patent on Nobel-Prize winning invention after 50 years of prosecution

Posted on December 16, 2008
In an appeal from the Board of Patent Appeals and Interferences, the Federal Circuit affirmed the Board's rejection of the claims based upon obviousness-type double patenting over previously-granted related patents.  The technical aspects of the invention are complex, but are overshadowed by the procedural aspects of this reexamination...

Ninth Circuit: Pre-1923 published foreign works may still be copyrighted, depending on notice

Posted on December 15, 2008
In a decision last week, the Ninth Circuit affirmed a district court's grant of summary judgment in favor of the plaintiff in a copyright case.  The works at issue, sculptures by the famed artist Renior and coauthored by one of his assistants, Richard Guino, were created between 1913 and 1917, and first published in France no later than 1917...

Federal Circuit holds oral arguments in claim and continuation limit rules case

Posted on December 09, 2008
On Friday, the Federal Circuit heard oral argument in the consolidated cases challenging the USPTO's new claim and continuation limit rules.  You can download the audio of the arguments here.  While it is, of course, too early to tell whether the Federal Circuit will affirm the permanent injunction against implementation of the rules, the tenor of the oral argument seems to indicate the court was skeptical of the USPTO's arguments...

Effective date of new BPAI appeal rules delayed pending completion of OMB review

Posted on December 09, 2008
Gene Quinn at the PLI Patent Law Blog reports that the new BPAI appeal brief rules, which were scheduled to go into effect for all appeal briefs filed on or after tomorrow, December 10, will be delayed.  The Office of Management and Budget is still considering the various submissions and comments regarding the rules, including comments regarding the burden on practitioners to comply with the rules...

Substantial question regarding validity insufficient to defeat likelihood of success?

Posted on December 09, 2008
In a recent decision, the Federal Circuit affirmed a district court's grant of a preliminary injunction concerning the manufacture of an extended release formulation of an antibiotic. In a lengthy opinion, the Federal Circuit applied the Supreme Court's obvious-to-try logic from KSR to pharmaceutical patents...

Ninth Circuit: Copyright owner's ambiguous reservation of rights clarified with extrinsic evidence

Posted on December 08, 2008
In a recent decision, the Ninth Circuit reversed a district court's grant of summary judgment that a copyright holder did not have standing to sue for copyright, trademark, unfair competition, and related declaratory judgment claims.  The case involved the film Gone in 60 Seconds, produced and directed in 1974 by H...

USPTO releases 2008 annual report

Posted on November 17, 2008
The USPTO today released its annual report for fiscal year 2008 (press release here), which ended September 30.  Below is a comparison of a few key statistics with the 2007 stats:  2007 2008 change Average months to first action (patent)  25...

USPTO to implement annual maintenance fee for patent practitioners

Posted on November 17, 2008
In today's Federal Register, the USPTO has indicated its implementation of a final rule to begin collecting annual "maintenance fees" from practitioners registered to practice before the USPTO.  The notice states the fees "will recover the estimated average cost to the Office for the roster maintenance process, including the costs of operating the disciplinary system...

Federal Circuit clarifies burdens of proof when priority to earlier application is contested

Posted on November 11, 2008
In a recent decision, the Federal Circuit affirmed a district court's determination that the asserted claims of a patent were not entitled to the effective filing date of the earliest application in a chain of four applications, and that as a result the claims were anticipated by intervening prior art...

Ninth Circuit: Trademark claim over use in video game stripped away by First Amendment

Posted on November 07, 2008
In a decision Wednesday, the Ninth Circuit affirmed a district court's grant of summary judgment that the producer of Grand Theft Auto: San Andreas had a First Amendment defense against a claim of trademark infringement.  The plaintiff owns a strip club known as the "Play Pen" on the eastern edge of downtown Los Angeles...

Second Circuit: Copyright license of indeterminate term improperly read to be perpetual

Posted on November 07, 2008
In this appeal from the United States District Court for the Northern District of New York, the Second Circuit reversed the dismissal of a copyright claim based on ambiguity in a contract, but affirmed dismissal of the antitrust claims because the plaintiff's proposed market definition was not plausible...

Federal Circuit declines to consider constitutionality of BPAI judge appointments, affirms rejection

Posted on November 06, 2008
In a decision this week, the Federal Circuit decided a case involving both obviousness and the Appointments Clause relating to allegedly unconstitutional appointment of members of the Board of Patent Appeals and Interferences.  The court determined that appellants failed to timely raise the issue of the constitutionality of the Appointments Clause by not presenting it to the Board, and therefore waived the issue on appeal...

Disclosure of single antibody insufficient to describe genus of related antibodies

Posted on November 06, 2008
In a recent decision, the Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences sustaining in part the examiner's final rejection of the broadest claim in an application, directed to methods of treating neurofibrosarcoma using monoclonal antibodies...

Bilski: No machine or transformation, no patentable method, at least for now

Posted on November 03, 2008
As we reported Thursday, the Federal Circuit has decided In re Bilski, an en banc decision regarding the scope of patentable subject matter.  Specifically, the court addressed what is necessary for a method to fall within the scope of patentable subject matter under § 101...

Federal Circuit reaffirms anticipatory reference must have all elements as arranged in the claim

Posted on October 31, 2008
In a recent decision, the Federal Circuit affirmed a district court's finding of indefiniteness but reversed the district court's holding of anticipation of other claims.  The district court held the means-plus-function limitations did not have corresponding structure disclosed in the specification, rendering them indefinite, and that the combination of two examples in a prior art publication anticipated the remaining asserted claims...

Bilski decided

Posted on October 30, 2008
The decision is available here.  It adopts the "machine-or-transformation" test for patentable subject matter.  As stated by the majority:The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article...

BPAI: 102(e) art can be effective prior art as of provisional priority date

Posted on October 29, 2008
In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference...

Remittitur without new trial requires legal error, not error as a matter of law

Posted on October 29, 2008
In a recent decision, the Federal Circuit reversed a district court's reduction of the jury's damages award, remanding the case for a new trial on damages, and affirmed the jury's verdict of willful infringement and the district court's award of attorney fees under § 285...

Jury's pre-KSR nonobviousness verdict reversed post-KSR

Posted on October 29, 2008
In a recent decision, the Federal Circuit affirmed a district court's grant of a judgment as a matter of law that the asserted claims of a patent were obvious after a jury verdict of no obviousness.  KSR was decided after the jury's verdict but before the district court ruled on the defendant's motion for judgment as a matter of law...

If no anticompetitive effect outside exclusionary zone of patent, reverse payment OK in ANDA cases

Posted on October 29, 2008
In a recent decision, the Federal Circuit upheld the district court's grant of summary judgment in an antitrust case.  At issue was whether reverse payments (from the patentee to the accused infringer) in the context of the Hatch-Waxman Act violated antitrust laws...

Tenth anniversary of the Digital Millenium Copyright Act

Posted on October 28, 2008
On October 28, 1998, President Clinton signed the Digital Millenium Copyright Act into law.  The Act is probably best known for two of its provisions:  (1) the anti-cirumvention provsion, which prohibits circumventing a "technological measure that effectively controls access to" a copyrighted work, and (2) the online "safe harbor" provision, which generally insulates parties that host material online from liability for infringement provided they follow the prescribed notice and takedown procedure...

ITC cannot enter limited exclusion order against non-parties

Posted on October 21, 2008
In a decision last week, the Federal Circuit vacated a limited exclusion order issued by the International Trade Commission in the most recent dispute between Qualcomm and Broadcom.  The case involved alleged infringement of one of Broadcom's patents relating to chips for wireless communication, specifically directed toward power saving technology...

High materiality without explanation for nondisclosure leads to inference of intent to deceive

Posted on October 17, 2008
In a recent decision, the Federal Circuit affirmed a district court's finding of inequitable conduct for one patent but reversed on a second, affirmed a finding of no invalidity of the second patent, but vacated the finding of infringement after modifying the district court's claim construction of a claim term...

Eleventh Circuit: Website in Tennessee using Floridian's trademark sufficient for jurisdiction

Posted on October 17, 2008
In a decision last week, the Eleventh Circuit reversed a district court's dismissal of a trademark infringement case for lack of personal jurisdiction.  The district court held that the allegedly infringing conduct, operating a website, was insufficient to warrant jurisdiction in the plaintiff's home state of Florida...

Anticipation no longer the epitome of obviousness? Claims can be anticipated but nonobvious

Posted on October 16, 2008
The Federal Circuit recently affirmed a district court's finding of non-willful infringement for one product, reversed its claim construction and related finding of noninfringement of a second product, and vacated its judgment as a matter of law on the issue of anticipation...

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