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Table of 2011 Cases |
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Chapter 1: |
Utility and Inventions Patentable |
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- § 1:1 : Association for Molecular Pathology v. United States Patent & Trademark Office1
- The distinction . . . between a product of nature and a human-made invention for purposes of § 101 turns on a change in the claimed composition’s identity compared with what exists in nature. Specifically, the Supreme Court has drawn a line between compositions that, even if combined or altered in a manner not found in nature, have similar characteristics as in nature, and compositions that human intervention has given “markedly different,” or “distinctive,” characteristics.
- § 1:2 : Classen Immunotherapies, Inc. v. Biogen IDEC8
- Step of immunization distinguished patent-eligible claims from those that were not.
- § 1:3 : CyberSource Corp. v. Retail Decisions, Inc.11
- Beauregard-type claim may be analyzed as a process claim and does not per se result in patent-eligible subject matter.
- § 1:3.1 : The Claims at Issue in This Case16
- § 1:4 : Ultramercial, LLC v. Hulu, LLC17
- Court emphasizes that section 101 is a “coarse” gauge of patentability: claims drawn to a method of distributing copyrighted products over the Internet, in this instance, are patent-eligible.
- § 1:4.1 : The Claims at Issue in This Case20
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Chapter 2: |
Novelty and Statutory Bars |
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- § 2:1 : August Technology Corp. v. Camtek, Ltd.23
- A device may be the subject of an offer for sale prior to its “being ready for patenting,” but there is no actual offer for sale until after conception.
- § 2:2 : In re NTP, Inc. (NTP Seven Appeal Op.)26
- Title of document, “Mobile Data Network Description,” held sufficiently similar to problem the patents purport to solve—transmission of data to mobile computers—that document was accessible. Issues regarding authenticity, namely additional staple holes, different paper “batches,” and headings different from text did not show any potential alterations occurred after date of deposit.
- § 2:3 : In re NTP, Inc. (NTP Seven Appeal Op.)29
- Contrary testimony by co-inventor may undercut alleged evidence of corroboration.
- § 2:4 : Creative Compounds, LLC v. Starmark Laboratories31
- An accused infringer cannot obtain the benefit of the lower preponderance-of-the-evidence standard of proof prevailing in interference proceedings simply by alleging, as a defense to infringement, that the asserted patent is invalid based on a co-pending patent unless common claimed subject matter is first identified and an adjudication of priority is sought. An email ordering certain ingredients does not establish conception without further explanation.
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Chapter 3: |
Nonobviousness |
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- § 3:1 : In re Brimonidine Patent Litigation37
- May not be “obvious to try” if no “anticipated success”—dissent—only requires a “reasonable” expectation of success.
- § 3:2 : In re Glatt Air Techniques, Inc.39
- Evidence of commercial success need not cover every embodiment.
- § 3:3 : Innovention Toys, LLC v. MGA Entertainment, Inc.41
- Electronic games may constitute analogous art to physical games: court concludes that because both were concerned with “designing a winnable yet entertaining strategy game” that was sufficient to establish analogous art.
- § 3:4 : In re Jung44
- The PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132 in notifying the applicant by stating the reasons for the rejection, objection, or requirement, together with such information and references as may be useful in judging the propriety of continuing prosecution of the application.
- § 3:5 : In re Kao47
- For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.
- § 3:6 : In re Klein53
- Prior art not reasonably pertinent to the particular problem with which the inventor is involved is non-analogous art.
- § 3:6.1 : The Claims at Issue in This Case56
- § 3:7 : Spectralytics, Inc. v. Cordis Corp.56
- Statements by defendants that accused machine was “superior” and had “advanced technology” may serve to show nexus between invention and commercial success where accused machines were allegedly copied from patented machine.
- § 3:7.1 : The Claims at Issue in This Case59
- § 3:8 : Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. (Star Scientific II)60
- Lack of motivation to combine reference teachings leads to a finding of nonobviousness.
- § 3:8.1 : The Claims at Issue in This Case64
- § 3:9 : Tokai Corp. v. Easton Enterprises, Inc.65
- Obviousness found where prior art discloses all of the claim limitations and art is predictable.
- § 3:10 : Tyco Healthcare Group LP v. Mutual Pharmaceutical Co.68
- Ordinarily, where a range is disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness that may be rebutted by showing either that the prior art taught away from the invention, or new and unexpected results relative to the prior art.
- § 3:11 : Unigene Laboratories, Inc. v. Apotex, Inc.71
- Even accepting that there was a design need and market pressure to develop a bioequivalent to an existing pharmaceutical formulation, and even though the active ingredient was known, there was no evidence that it would have been obvious to use citric acid as an absorption enhancer.
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Chapter 4: |
Specification and Claims |
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- § 4:1 : Atlantic Research Marketing Systems, Inc. v. Troy79
- Claims construed as broader than the written description are invalid.
- § 4:2 : Billups-Rothenberg, Inc. v. Associated Regional and University Pathologists, Inc.82
- Lack of disclosed species may lead to invalidity of generic claim based on lack of written description support per Ariad. Claims to a genetic test for a specific mutation held invalid where specific mutation had not been identified.
- § 4:3 : Boston Scientific Corp. v. Johnson & Johnson85
- Court reiterates “rule” from Regents of the Univ. of Cal. v. Eli Lilly & Co. (1997) that “[a] written description of an invention involving a chemical genus, like a description of a chemical species, ‘requires a precise definition, such as by structure, formula, [or] chemical name,’ of the claimed subject matter sufficient to distinguish it from other materials” in concluding that patents drawn to drug-eluting stents were invalid for failure to provide an adequate written description. Broad generic claims (“rapamycin, or a macrocyclic lactone analog thereof”) lacking commensurate written description support for species (“macrocyclic lactone analogs” of rapamycin covered thousands of species) held invalid.
- § 4:4 : Centocor Ortho Biotech, Inc. v. Abbott Laboratories90
- The scope of the right to exclude cannot “over-reach the scope of [the] contribution to the field of art as described in the patent specification.”
- § 4:5 : Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp.95
- Original claims may provide written description support, contrary to statements in Ariad, where such claims are not broadly drawn generic or functional claims. When two embodiments are disclosed for addressing a problem, the claims do not necessarily cover both embodiments conjunctively: “[i]nventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in the claim.”
- § 4:6 : Harari v. Lee100
- Best practices: incorporation by reference language must be clear whether all or a portion of another application is incorporated by reference. Claim construction: when the claim language and specification indicate that “a” means one and only one, it is appropriate to construe “a” as such even in the context of an open-ended “comprising” claim.
- § 4:7 : In re Katz Interactive Call Processing Patent Litigation104
- System claims having a method step are indefinite per IPXL.
- § 4:8 : Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. (Star Scientific II)105
- Adding an example to a non-provisional application with a parameter varying from the earlier provisional application does not necessarily result in a loss of the priority date.
- § 4:9 : Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. (Star Scientific II)107
- Failure to disclose exact parameters for achieving a “controlled environment” does not necessarily mean claims are indefinite where it was known in the art how to vary those parameters.
- § 4:10 : Wellman, Inc. v. Eastman Chemical Co.110
- One inventor’s subjective belief that undisclosed recipe used for a commercial embodiment represented the best mode may be sufficient to satisfy first prong of best mode analysis: evidence that company sought to maintain one ingredient as a trade secret may lead to satisfying the second prong of the best mode analysis. District court need not construe the claims if the parties agree the claims cover the non-disclosed best mode.
- § 4:11 : Wellman, Inc. v. Eastman Chemical Co.115
- Industry standards for certain testing may avoid a finding of indefiniteness.
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Chapter 5: |
Interference and Priority of Invention |
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- § 5:1 : Arlington Industries, Inc. v. Bridgeport Fittings, Inc.119
- Panel split illustrates competing views of significance of specification in claim construction—panel majority: claim language not limited by disclosed embodiments—Judge Lourie in dissent: “you should get what you disclose.”
- § 5:1.1 : The Claims at Issue in This Case122
- § 5:2 : Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.123
- Federal Circuit reiterates that “[a]n interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.”
- § 5:3 : In re NTP, Inc. (NTP Seven Appeal Op.)125
- Domestic priority can be considered and determined during reexamination proceedings. Issues such as domestic priority and written description support may be considered during reexamination unless actually addressed during original examination.
- § 5:4 : Streck, Inc. v. Research & Diagnostic Systems, Inc. (Streck I)129
- Live testimony triggers de novo fact finding: because a section 146 action is a new civil proceeding subject to de novo fact finding, the burden of persuasion rests on the junior party. Where PTO board applies the preponderance of the evidence standard in an interference involving co-pending applications, district court applies same standard in subsequent section 146 action.
- § 5:5 : Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP133
- The party asserting prior invention must prove that it appreciated what it had made. The prior inventor does not need to know everything about how or why its invention worked. Nor must the prior inventor conceive of the invention using the same words as the patentee would later use to claim it.
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Chapter 6: |
Claim Construction |
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- § 6:1 : Absolute Software, Inc. v. Stealth Signal, Inc.137
- References to “present invention” in the specification do not necessarily limit the claims if other intrinsic evidence so indicates.
- § 6:2 : AIA Engineering Ltd. v. Vega Industries, Ltd., Inc.138
- Claim construction may resolve alleged recapture estoppel.
- § 6:3 : American Piledriving Equipment, Inc. v. Geoquip, Inc.139
- Court resolves construction of three terms previously construed by seven district courts, no two of which arrived at the same construction. Consistent references in specification to same structure can lead to conclusion that structure constitutes the “invention” rather than a preferred embodiment. Prosecution history disclaimer may arise even though the examiner did not agree with the applicants’ arguments.
- § 6:4 : In re Aoyama144
- A flow chart may not provide sufficient “structure” to support a means-plus-function limitation.
- Federal Circuit may affirm on a different ground of rejection in some instances (and remand with instructions to consider the same as a new ground of rejection entered by the board).
- § 6:5 : CBT Flint Partners, LLC v. Return Path, Inc.149
- Although there may be multiple alternatives for correcting a claim, a district court must view the alternatives from the point of view of one of ordinary skill in the art: if all three alternatives result in the same claim scope, the district court has power to correct the claim.
- § 6:6 : Centillion Data Systems, LLC v. Qwest Communications Int’l, Inc.153
- As an issue of first impression involving claim elements in the possession of more than one party, to “use” a system for purposes of infringement, a party must put the invention into service—that is, control the system as a whole and obtain benefit from it; however, that does not require that a party must exercise physical or direct control over each individual element of the system.
- § 6:7 : Cordance Corp. v. Amazon.com157
- “Automatically” within the context of a claim may not require the complete absence of human intervention.
- § 6:8 : Harari v. Lee159
- Incorporation by reference language must be clear whether all or a portion of another application is incorporated by reference.
- Claim construction: when the claim language and specification indicate that “a” means one and only one, it is appropriate to construe “a” as such even in the context of an open-ended “comprising” claim.
- § 6:9 : Hologic, Inc. v. SenoRx, Inc.163
- Claim construction is highly factual: claim differentiation is not limited to an independent-dependent claim relationship.
- § 6:10 : IGT v. Bally Gaming International, Inc.169
- The meaning of a claim term may be deduced from the terms that surround it: “one” does not necessarily mean “only one.”
- § 6:11 : Inventio AG v. ThyssenKrupp Elevator Americas Corp.171
- It is proper to consult the intrinsic record, including the written description, when determining if a challenger has rebutted the presumption that a claim lacking the term “means” recites sufficiently definite structure.
- § 6:11.1 : The Claims at Issue in This Case175
- § 6:12 : In re Katz Interactive Call Processing Patent Litigation176
- Federal Circuit limits WMS Gaming and Aristocrat: claims calling for a “means for processing,” “receiving,” and “storing” may simply claim a general purpose computer, although in means-plus-function terms. The question is whether the functions recited in the claims can be performed by a general-purpose processor or, instead, constitute specific computer-implemented functions that require a disclosure of corresponding algorithms.
- § 6:13 : Lexion Medical, LLC v. Northgate Technologies, Inc.180
- Limitation “having a temperature within 2°C of the predetermined temperature” allows minor fluctuations.
- § 6:14 : Markem-Imaje Corp. v. Zipher Ltd.183
- That a device will only operate if certain elements are included is not grounds to incorporate those elements into the construction of the claims.
- § 6:15 : In re NTP, Inc. (NTP Seven Appeal Op.)186
- Claim language may determine meaning of claim terms.
- § 6:16 : Retractable Technologies, Inc. v. Becton, Dickinson & Co.188
- Illustrating split among the court, panel majority concludes that “body” in the claims requires a one-piece body, while dissent urges that claim language and claim differentiation lead to the conclusion that “body” is not limited to a one-piece body. Panel Majority: “In reviewing the intrinsic record to construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention.”
- § 6:17 : Typhoon Touch Technologies, Inc. v. Dell, Inc.193
- A term may receive other than its ordinary meaning, but the specification must clearly disclose such other meaning.
- § 6:17.1 : The Claims at Issue in This Case194
- § 6:18 : Typhoon Touch Technologies, Inc. v. Dell, Inc.195
- Court did not err in requiring apparatus claims to perform recited functions, rather than be merely “capable of” performing recited functions.
- § 6:19 : Typhoon Touch Technologies, Inc. v. Dell, Inc.197
- It suffices, for purposes of section 112(2), if the specification recites in prose the algorithm to be implemented by the programmer.
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Chapter 7: |
Infringement |
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- § 7:1 : Advanced Software Design Corp. v. Fiserv, Inc.201
- Court reiterates: a claim may avoid a conclusion that multiple entities are required to infringe if the claim simply defines the environment in which infringement must occur.
- § 7:1.1 : The Claims at Issue in This Case204
- § 7:2 : In re Brimonidine Patent Litigation205
- Infringement is based on the four corners of the ANDA.
- § 7:3 : Creative Compounds, LLC v. Starmark Laboratories207
- In actions alleging infringement under section 271(g), there is a rebuttable presumption under section 295 that the imported product was made by the patented method if the court finds: “(1) that a substantial likelihood exists that the product was made by the patented process, and (2) that the plaintiff has made a reasonable effort to determine the process actually used in the production of the product and was unable to so determine.”
- § 7:4 : McKesson Technologies, Inc. v. Epic Systems Corp.209
- Claims not directly infringed without a “single-user.”
- § 7:5 : Monsanto Co. v. Bowman212
- Unrestricted sale of patented genetically modified seed to grain elevator does not exhaust patent rights in seeds when used in planting.
- § 7:6 : Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc.214
- The evidentiary standard for showing equivalents remains preponderance of the evidence despite that alleged equivalent is separately patentable.
- § 7:7 : Uniloc USA, Inc. v. Microsoft Corp.219
- A claim may avoid a conclusion that multiple entities are required to infringe if the claim simply defines the environment in which infringement must occur.
- § 7:8 : Uniloc USA, Inc. v. Microsoft Corp.224
- When in a claimed “means” limitation the disclosed physical structure is of little or no importance to the claimed invention, there may be a broader range of equivalent structures than if the physical characteristics of the structure are critical in performing the claimed function in the context of the claimed invention.
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Chapter 8: |
Prosecution History Estoppel |
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- § 8:1 : Duramed Pharmaceuticals, Inc. v. Paddock Laboratories, Inc.227
- When the language of both original and issued claims begins with the words “[a] pharmaceutical composition,” that language defines the field of the invention for purposes of determining foreseeability: “foreseeability does not require flawless perfection to create an estoppel.”
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Chapter 9: |
Inequitable Conduct |
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- § 9:1 : American Calcar, Inc. v. American Honda Motor Co.231
- Non-disclosed prior art meets the “but for” standard when district court concludes patent is invalid in view thereof, but remand is necessary when the district court does not so find.
- § 9:2 : Cordis Corp. v. Boston Scientific Corp. (Cordis II)235
- Material reference in prosecuting attorney’s and inventor’s files may not give rise to an inference of intent to deceive.
- § 9:3 : Powell v. Home Depot U.S.A., Inc.238
- Failure to update a petition to make special does not meet the but-for materiality standard.
- § 9:4 : Therasense, Inc. v. Becton, Dickinson & Co.240
- “[A]s a general matter, the materiality required to establish inequitable conduct is but-for materiality”: exception for cases involving affirmative egregious misconduct.
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Chapter 10: |
Remedies/Relief |
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- § 10:1 : Eon-Net LP v. Flagstar Bancorp (Eon-Net II)249
- Court awards sanctions against non-practicing plaintiff and attorney based, in part, on filing numerous suits and offering to settle for nuisance value, and on asserting an unreasonable claim construction.
- § 10:2 : iLOR, LLC v. Google, Inc. (iLOR II)255
- Federal Circuit raises bar to an award of attorney fees: the objective baselessness standard for attorney fees against a non-prevailing plaintiff is identical to the objective recklessness standard for enhanced damages and attorney fees against an accused infringer.
- § 10:3 : Old Reliable Wholesale, Inc. v. Cornell Corp.258
- Sanctions may be awarded against the patentee only if the litigation is (1) brought in subjective bad faith, and (2) objectively baseless, that is, the same standard as the “objective recklessness” standard for determining willful infringement under Seagate.
- § 10:4 : Powell v. Home Depot U.S.A., Inc.261
- “Reasonable royalty” damages may exceed patentee’s anticipated profits.
- § 10:5 : Powell v. Home Depot U.S.A., Inc.262
- Willful infringement: “objective prong” may involve questions of law or questions of fact. Court decides questions of law, jury decides questions of fact. Court may decide objective prong after jury decides subjective prong.
- § 10:6 : In re Ricoh Co., Ltd. Patent Litigation265
- Costs for third-party database provider in connection with “e-discovery” are taxable costs; however, if parties’ cost-sharing agreement does not specify that it is an “interim” agreement, costs may not be taxable. Copying costs are not recoverable if invoices simply refer generically to “document production” and fail to show that documents were copied at prevailing party’s expense, at the request of the opposing party, and that copies were tendered to the opposing party. Deposition costs may include costs for depositions taken for trial preparation even though not used for successful summary judgment motion, and may include costs for both written transcript and video.
- § 10:7 : Robert Bosch LLC v. Pylon Manufacturing Corp.269
- Federal Circuit has appellate jurisdiction from denial of an injunction—Carson factors apply only to orders having the effect of granting or denying an injunction.
- § 10:8 : Robert Bosch LLC v. Pylon Manufacturing Corp.272
- Following eBay, irreparable harm is not presumed from a finding of infringement, but courts cannot ignore the fundamental patent property right to exclude.
- § 10:9 : Robert Bosch LLC v. Pylon Manufacturing Corp.273
- District court committed a clear legal error in its concluding that the presence of additional competitors, without more, cuts against a finding of irreparable harm: the absence of a two-supplier market does not cut against irreparable harm.
- § 10:10 : Robert Bosch LLC v. Pylon Manufacturing Corp.275
- District court committed a clear legal error in relying on the “non-core” nature of patentee’s wiper blade business in relation to its business as a whole.
- § 10:11 : Robert Bosch LLC v. Pylon Manufacturing Corp.276
- Loss of market share and access to potential customers, as well as infringer’s inability to satisfy a judgment, are factors in determining irreparable harm.
- § 10:12 : Robert Bosch LLC v. Pylon Manufacturing Corp.277
- A district court should assess whether a damage remedy is a meaningful one in light of the financial condition of the infringer before the alternative of money damages can be deemed adequate.
- § 10:13 : Robert Bosch LLC v. Pylon Manufacturing Corp.277
- When considering balance of hardships, relative size of the parties is not a determining factor.
- § 10:14 : Robert Bosch LLC v. Pylon Manufacturing Corp.278
- “Public interest”—patentee’s right to exclude and infringer’s right to compete may render factor neutral.
- § 10:15 : Sanofi-Aventis v. Apotex, Inc. (Plavix III)279
- Prejudgment interest may be limited by an agreement between the parties limiting an award of “damages.”
- § 10:16 : Spectralytics, Inc. v. Cordis Corp.282
- Per i4i v. Microsoft, the test for willfulness is distinct from the factors guiding the district court regarding enhanced damages. For purposes of enhanced damages, the failure to obtain an opinion of counsel or otherwise investigate the “patent situation” can be considered as part of the totality of the circumstances.
- § 10:17 : Tessera, Inc. v. U.S. Int’l Trade Comm’n285
- A license authorizing sales without precondition leads to exhaustion even though licensees are not paying royalties, or not paying royalties timely.
- § 10:18 : TiVo, Inc. v. EchoStar Corp.287
- Good faith or lack of intent is not a defense to a finding of contempt. Two-step analysis of KSM Fastening Systems is overruled. District courts have broad discretion whether to proceed through a contempt proceeding or a new trial. District courts must consider whether differences between redesigned product and infringing product are “significant.”
- § 10:19 : Uniloc USA, Inc. v. Microsoft Corp.292
- The 25% rule of thumb meets its demise: Federal Circuit rejects rule as “fundamentally flawed.”
- § 10:20 : Uniloc USA, Inc. v. Microsoft Corp.296
- Evidence on the Georgia-Pacific factors “must be tied to the relevant facts and circumstances of the particular case at issue and the hypothetical negotiations that would have taken place in light of those facts and circumstances at the relevant time.”
- § 10:21 : Uniloc USA, Inc. v. Microsoft Corp.297
- The entire market value rule does not apply for minor patent improvements simply by asserting a low enough royalty rate.
- It may be improper to argue to the jury, directly or through cross-examination, gross revenues based on the entire market value where the accused infringing feature is not responsible for creating market demand.
- Once the “cat is out of the bag” it may not be correctable by a jury instruction, meaning a new trial may be required.
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Chapter 11: |
PTO Practice and Procedure |
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- § 11:1 : In re Leithem301
- The thrust of the board’s rejection changes when it finds facts not found by the examiner regarding the differences between the prior art and the claimed invention.
- § 11:2 : In re Lovin303
- Court sustains board’s interpretation of Rule 41.37—“merely pointing out the differences in what the claims cover . . . is not a substantive argument as to the separate patentability of the claims.”
- § 11:3 : In re Mostafazadeh306
- Recapture estoppel applies even though reissue claims do not seek to recapture all that was surrendered during original prosecution.
- § 11:4 : Radio Systems Corp. v. Accession, Inc.311
- “[O]nly enforcement or defense efforts related to the patent rather than the patentee’s own commercialization efforts are to be considered for establishing specific personal jurisdiction in a declaratory judgment action against the patentee.” Commercialization efforts directed solely to the plaintiff do not create special jurisdiction.
- § 11:5 : In re Stepan Co.314
- Changing the statutory basis of a prior art reference from section 102(b) to section 102(a) and concluding that a Rule 131 affidavit failed to antedate the reference constitute a new ground of rejection. Board’s failure to identify the same as a new ground of rejection excuses applicant from seeking rehearing or remand to the examiner.
- § 11:6 : In re Tanaka316
- Adding a single dependent claim while retaining all original claims is a proper reissue. Adding dependent claims as a hedge against invalidity is a proper exercise of the reissue statute.
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Chapter 12: |
District Court Jurisdiction and Procedure |
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- § 12:1 : ABB, Inc. v. Cooper Industries, LLC321
- In declaratory judgment actions, the court examines the declaratory defendant’s hypothetical well-pleaded complaint to determine if subject matter jurisdiction exists. As an issue of first impression, federal courts have jurisdiction over a declaratory judgment action where there is a federal cause of action but only a state law defense.
- § 12:2 : Abraxis Bioscience, Inc. v. Navinta LLC323
- Nunc pro tunc assignment after date of complaint will not confer standing.
- § 12:3 : Absolute Software, Inc. v. Stealth Signal, Inc.327
- When a party fails to timely file an objection to a special master’s proposed construction of a term, that party waives an alternative construction unless waiver is excused by the Federal Circuit.
- § 12:4 : Arris Group, Inc. v. British Telecommunications PLC329
- A mere adverse economic interest is insufficient to create declaratory judgment jurisdiction. However, a supplier may have standing to commence a declaratory judgment action.
- § 12:5 : Association for Molecular Pathology v. United States Patent & Trademark Office334
- “Simply disagreeing with the existence of a patent or even suffering an attenuated, non-proximate, effect from the existence of a patent does not meet the Supreme Court’s requirement for an adverse legal controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”
- § 12:6 : In re BP Lubricants USA, Inc.339
- Rule 9(b)’s particularity requirement applies to false marking claims and a complaint alleging false marking is insufficient when it only asserts conclusory allegations that a defendant is a “sophisticated company” and “knew or should have known” that the patent expired.
- § 12:7 : Creative Compounds, LLC v. Starmark Laboratories341
- In the absence of a substantial controversy concerning an adverse legal interest, a district court lacks declaratory judgment subject matter jurisdiction.
- § 12:8 : Hynix Semiconductor, Inc. v. Rambus, Inc.343
- The standard for determining when litigation is reasonably foreseeable does not carry a gloss requiring that litigation be “imminent, or probable without significant contingencies.”
- § 12:9 : Juniper Networks, Inc. v. Shipley346
- Not error to dismiss complaint alleging false marking under Rule 12(b)(6) without leave to amend where cause of action cannot be stated.
- § 12:10 : In re Katz Interactive Call Processing Patent Litigation349
- Claim selection procedure requiring an initial selection of claims, followed by narrowing that selection after discovery, with a proviso that other claims raising non-duplicative issues of validity or infringement could be added, but refusing to sever and stay non-selected claims, did not violate due process.
- § 12:11 : Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC352
- Three Federal Circuit judges disagreed with the Federal Circuit majority on whether raising a “substantial question” of invalidity should result in denial of a preliminary injunction.
- § 12:12 : In re Link_A_Media Devices Corp.354
- Plaintiff’s choice of forum or defendant’s state of incorporation is not dispositive for motions under section 1404(a).
- § 12:13 : Micron Technology, Inc. v. Rambus, Inc.357
- Spoliation may lead to dismissal of suit if “bad faith” and prejudice are shown, but court splits on what constitutes evidence of “bad faith” and when litigation is reasonably forseeable: (1) “[t]he duty to preserve evidence begins when litigation is ‘pending or reasonably foreseeable,’” (2) “[w]hen litigation is ‘reasonably foreseeable’ is a flexible fact-specific standard that allows a district court to exercise the discretion necessary to confront the myriad factual situations inherent in the spoliation inquiry,” but does not require that litigation be “imminent, or probable without significant contingencies” or other gloss. The district court’s factual findings leading to a conclusion when litigation was “reasonably forseeable” are reviewed for clear error.
- § 12:14 : In re Microsoft Corp.367
- Recently incorporating in forum does not weigh against transferring venue.
- § 12:15 : Ohio Willow Wood Co. v. Thermo-Ply, Inc.369
- Judge Moore concurring: vacatur is an “extraordinary remedy” and the public interest is overwhelming when patents are held invalid.
- § 12:16 : Powertech Technology Inc. v. Tessera, Inc.370
- District court has declaratory judgment jurisdiction to resolve controversy whether patent rights are exhausted. Inconsistent arguments before the ITC may give rise to an article III controversy.
- § 12:17 : Rembrandt Data Technologies, LP v. AOL, LLC374
- “[A] district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims” and that determination “must be made from the point of view of one skilled in the art.”
- § 12:17.1 : The Claims at Issue in This Case375
- § 12:18 : In re Verizon Business Network Services, Inc.376
- That the district court handled litigation involving the same patent five years earlier is insufficient reason to deny a motion to transfer.
- § 12:19 : Warrior Sports, Inc. v. Dickinson Wright, PLLC378
- Federal district court has subject matter jurisdiction over legal malpractice action asserting that alleged inequitable conduct forced settlement of a suit for less than the appropriate amount where resolving malpractice action requires resolving prior settled infringement action.
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Chapter 13: |
Appellate Court Jurisdiction and Practice |
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- § 13:1 : Aventis Pharma S.A. v. Hospira, Inc.381
- Court indicates it may grant sanctions for improper cross-appeal.
- § 13:2 : Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.383
- Federal Circuit retains appellate jurisdiction in section 291 action despite that one of the patents in interference expired following district court judgment.
- § 13:3 : Spread Spectrum Screening LLC v. Eastman Kodak Co.385
- Order severing manufacturer defendant, transferring that action, and staying remaining claims against customers, is not a final appealable order.
- § 13:4 : In re Violation of Rule 28(d)387
- Court imposed sanction for violation of Federal Circuit Rule 28(d) regarding briefs with confidentiality restrictions.
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Chapter 14: |
Ownership Agreements and Inventorship |
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- § 14:1 : General Protecht Group, Inc. v. Leviton Manufacturing Co.391
- “[W]here . . . continuations issue from parent patents that previously have been licensed as to certain products, it may be presumed that, absent a clear indication of mutual intent to the contrary, those products are impliedly licensed under the continuations as well. If the parties intend otherwise, it is their burden to make such intent clear in the license.”
- § 14:2 : MHL Tek, LLC v. Nissan Motor Co.395
- Assigning all right, title and interest to “inventions and discoveries” in a patent application may transfer rights in other “unrelated” applications, i.e., non-continuing applications. The analysis is whether the claims of the subject patent are supported (in a section 112(1) written description sense) by the previously assigned application.
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Chapter 15: |
Design Patents |
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Chapter 16: |
Miscellaneous |
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- § 16:1 : Bettcher Industries, Inc. v. Bunzl USA, Inc.403
- Issue of first impression: the estoppel provision of section 315 is triggered when all appeal rights have been exhausted, not when examination is completed.
- § 16:2 : In re Construction Equipment Co.405
- Reexamination that reaches a conclusion opposite to that reached by the Federal Circuit does not render reexamination unconstitutional.
- § 16:3 : Delano Farms Co. v. California Table Grape Commission408
- A license not granting a licensee a right to sue for infringement does not transfer “all substantial rights.” Waiver of sovereign immunity in section 702 of the APA is broad enough to allow pursuit of equitable relief against USDA on patent law claims.
- § 16:4 : Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.409
- Patent term extensions apply to the entire patent, not just (to individual claims).
- § 16:5 : John Mezzalingua Associates, Inc. v. U.S. Int’l Trade Comm’n411
- Litigation expenses may be considered in determining whether the domestic industry requirement is satisfied, but only to the extent such expenses relate to licensing.
- § 16:6 : Marine Polymer Technologies, Inc. v. HemCon, Inc.414
- Absolute intervening rights may arise from a reexamination based on a party’s arguments that change claim scope even though claim language is unchanged. Scope of original claim may change and give rise to intervening rights based on changed claim construction.
- § 16:7 : In re Shared Memory Graphics LLC418
- Conflict of interest may be waived prospectively in a joint defense agreement.
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Chapter 17: |
Comprehensive Table of Cases |
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