http://www.ipwatchdog.com Patents, Software Patents, Patent Applications & Patent Law Tue, 21 May 2013 20:52:32 +0000 en-US hourly 1 http://wordpress.org/?v=3.5.1 http://www.ipwatchdog.com/2013/04/26/claim-construction-a-game-of-chance-at-the-federal-circuit/id=39587/ http://www.ipwatchdog.com/2013/04/26/claim-construction-a-game-of-chance-at-the-federal-circuit/id=39587/#comments Fri, 26 Apr 2013 11:30:07 +0000 Cindy Chen http://www.ipwatchdog.com/?p=39587 Related posts:

1. Heightened Judicial Deference for Patent Claim Constructions?Patent litigants have long expected an appeal to follow nearly every jury verdict and that a key question (if not the key question) on appeal will be the district court’s construction of one or more disputed claim terms. Syntrix’s recent infringement verdict against Illumina would be seen as no exception if not for what happened the very next day -- the Federal Circuit’s decision to rehear en banc the panel’s decision in Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp. to consider whether to reset the standard of review for claim construction, long recognized as a question of...
2. Do Patent Applicants have a Chance at the CAFC?Do patent applicants appealing a rejection of their claims from the Patent Trial and Appeals Board have a chance of success at the Court of Appeals for the Federal Circuit? What about patentees appealing to the CAFC from rejections in reexamination proceedings? The candid answer is not much of a chance. Of course, every case is different and needs to be considered on its own merits. Yet, the standards for review of Board decisions, followed by the CAFC, significantly favor affirmance of those decisions....
3. Livid About Non-precedential Avid Decision from Federal CircuitWhen an element is claimed using language falling under the scope of §112, ¶6, the specification must be consulted to determine the structure, material, or acts corresponding to the function recited in means-plus-function element in the claim. As emphasized by the Federal Circuit, “the ‘broadest reasonable interpretation’ that an examiner may give means-plus-function language is that statutorily mandated in paragraph six…, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.” In re Donaldson, 16 F.3d 1189, 1194 (Fed. Cir. 1994)(en banc); see also, MPEP 2182, 8th Ed. (August 2012)....

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2013/04/26/claim-construction-a-game-of-chance-at-the-federal-circuit/id=39587/feed/ 0 http://www.ipwatchdog.com/2013/04/01/heightened-judicial-deference-for-patent-claim-constructions/id=38040/ http://www.ipwatchdog.com/2013/04/01/heightened-judicial-deference-for-patent-claim-constructions/id=38040/#comments Mon, 01 Apr 2013 17:21:23 +0000 Jim Lennon http://www.ipwatchdog.com/?p=38040 Related posts:

1. Does the Federal Circuit Give Enough Deference?The attorneys for 800 Adapt, Inc. have recently filed a Petition for a Writ of Certiorari review of 800 Adapt, Inc. v. Murex Sec. Ltd., 539 F.3d 1354 (Fed. Cir. 2008) claiming that the Federal Circuit does not provide enough deference to district courts on claim construction and they should. According to Stephen Milbrath and David [...]...
2. CAFC Refuses to Clarify Claims Construction Law, DeferenceI have wondered out loud whether the Judges of the Federal Circuit realize that the outcome is unpredictable until the panel has been announced. It seems that at least some do. How is that defensible? How do others not on the Court not see a problem? The law needs to be certain and predictable and at the Federal Circuit far too many times it is neither. Claims construction is but one of the areas as clear as mud. The Federal Circuit was created to bring certainty to the law, but what has transpired over the course of the last 10...
3. Manhattan Jury Orders Nintendo to Pay $30 Million for Patent InfringementA Manhattan federal jury recently ordered Nintendo Co. Ltd. to pay Tomita Technologies International, Inc. ("Tomita") over $30 million in damages in a patent infringement case that concerned certain 3D technologies. Tomita, which originally filed the claim against Nintendo back in June of 2011, claimed that Nintendo's 3DS hand-held video game system (which launched in March of 2011) infringed on Tomita's patent called "Stereoscopic image picking up and display system based upon optical axes cross-point information" (also known as the '664 patent), which is technology that shows 3D images that can be viewed without the use of special 3D glasses....

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2013/04/01/heightened-judicial-deference-for-patent-claim-constructions/id=38040/feed/ 0 http://www.ipwatchdog.com/2013/02/25/harris-corp-v-fed-e-black-box-claim-construction-by-split-federal-circuit-panel-leaves-us-in-the-dark/id=35959/ http://www.ipwatchdog.com/2013/02/25/harris-corp-v-fed-e-black-box-claim-construction-by-split-federal-circuit-panel-leaves-us-in-the-dark/id=35959/#comments Mon, 25 Feb 2013 19:15:37 +0000 Nicholas Seckel http://www.ipwatchdog.com/?p=35959 Related posts:

1. CAFC Rules Patentee’s Expert Failed to Sufficiently Identify Elements of Claimed Data Transmitting MeansA “black letter” rule of patent law is that infringement requires proof that the alleged infringing device includes all elements or limitations recited in the claim.  Known alternatively as the “All Elements Rule” (AER) or “All Limitations Rule” (ALR), it behooves a patentee to make sure that each and every claim element or limitation is [...]...
2. RMail v. Amazon.com: Can Invalidity Based on 35 U.S.C. § 101 Be Properly Raised as a Defense in Litigation?*As pointed out astutely by RMail is that the Supreme Court jurisprudence on patent-eligibility under 35 U.S.C. § 101 have primarily involved ex parte prosecution appeals from the USPTO. There are only two instances involving patent litigation I’m aware of where the Supreme Court squarely determined patent-eligibility under 35 U.S.C. § 101: the recent case of Mayo Collaborative Services v. Prometheus Laboratories, Inc. (ruling that the claimed method was patent-ineligible under the “law of nature” doctrine); and the 2001 case of Pioneer Hi-Bred International v. JEM AG Supply (which ruled that sexually reproduced plants qualified as either “manufactures” or “compositions...
3. Heightened Judicial Deference for Patent Claim Constructions?Patent litigants have long expected an appeal to follow nearly every jury verdict and that a key question (if not the key question) on appeal will be the district court’s construction of one or more disputed claim terms. Syntrix’s recent infringement verdict against Illumina would be seen as no exception if not for what happened the very next day -- the Federal Circuit’s decision to rehear en banc the panel’s decision in Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp. to consider whether to reset the standard of review for claim construction, long recognized as a question of...

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2013/02/25/harris-corp-v-fed-e-black-box-claim-construction-by-split-federal-circuit-panel-leaves-us-in-the-dark/id=35959/feed/ 0 http://www.ipwatchdog.com/2013/02/13/does-the-term-invention-in-the-specification-limit-the-claims/id=35240/ http://www.ipwatchdog.com/2013/02/13/does-the-term-invention-in-the-specification-limit-the-claims/id=35240/#comments Wed, 13 Feb 2013 15:00:05 +0000 Gene Quinn http://www.ipwatchdog.com/?p=35240 Related posts:

1. A Primer on Indefiniteness and Means-Plus-FunctionThe basic law relative to § 112, ¶6 explains that a decision on whether a claim is indefinite under § 112, ¶ 6 requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Traditionally, claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art. The question with means-plus-function claiming, however, is whether evidence from that mythical individual skilled in the art is even admissible. No structure in the specification means the person of skill...
2. Patent Prosecution: 35 U.S.C. § 112(a) Must Be Raised Before a § 102 or § 103Logically, if the application does not describe an invention in terms that allows one skilled in the art to make and use it, then the Patent Office should not have sufficient information to suggest that the application is not novel or obvious. In order to determine something is not novel or obvious you first have to know what it is. I have no objection to the Patent Office putting a 35 U.S.C. § 112 (a) and novelty/obviousness rejection in the same Office Action, where the PTO explains that to the best of their understanding of the invention it would not...
3. CAFC Refuses to Clarify Claims Construction Law, DeferenceI have wondered out loud whether the Judges of the Federal Circuit realize that the outcome is unpredictable until the panel has been announced. It seems that at least some do. How is that defensible? How do others not on the Court not see a problem? The law needs to be certain and predictable and at the Federal Circuit far too many times it is neither. Claims construction is but one of the areas as clear as mud. The Federal Circuit was created to bring certainty to the law, but what has transpired over the course of the last 10...

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2013/02/13/does-the-term-invention-in-the-specification-limit-the-claims/id=35240/feed/ 20 http://www.ipwatchdog.com/2012/10/24/against-the-broadest-reasonable-interpretation-of-patent-claims/id=28892/ http://www.ipwatchdog.com/2012/10/24/against-the-broadest-reasonable-interpretation-of-patent-claims/id=28892/#comments Wed, 24 Oct 2012 13:29:51 +0000 Kip Werking http://www.ipwatchdog.com/?p=28892 Related posts:

1. Do Patent Applicants have a Chance at the CAFC?Do patent applicants appealing a rejection of their claims from the Patent Trial and Appeals Board have a chance of success at the Court of Appeals for the Federal Circuit? What about patentees appealing to the CAFC from rejections in reexamination proceedings? The candid answer is not much of a chance. Of course, every case is different and needs to be considered on its own merits. Yet, the standards for review of Board decisions, followed by the CAFC, significantly favor affirmance of those decisions....
2. Does the Federal Circuit Give Enough Deference?The attorneys for 800 Adapt, Inc. have recently filed a Petition for a Writ of Certiorari review of 800 Adapt, Inc. v. Murex Sec. Ltd., 539 F.3d 1354 (Fed. Cir. 2008) claiming that the Federal Circuit does not provide enough deference to district courts on claim construction and they should. According to Stephen Milbrath and David [...]...
3. Pressure Products v. Greatbatch: Why Another 5 Judge Panel?Nothing in the appealed issues in Pressure Products (claim construction, denial of motion for JMOL, leave to amend answer) even remotely hints at or suggests the basis for this five judge panel. In fact, Pressure Products has all the markings of a fairly ordinary, garden variety patent infringement case. So why not the standard three judge panel? Not a word of explanation....

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2012/10/24/against-the-broadest-reasonable-interpretation-of-patent-claims/id=28892/feed/ 21 http://www.ipwatchdog.com/2012/10/15/the-mysterious-disappearance-of-functionality-considerations-in-apple-v-samsung-design-patent-claim-construction/id=28875/ http://www.ipwatchdog.com/2012/10/15/the-mysterious-disappearance-of-functionality-considerations-in-apple-v-samsung-design-patent-claim-construction/id=28875/#comments Mon, 15 Oct 2012 11:25:41 +0000 Richard Redano http://www.ipwatchdog.com/?p=28875 Related posts:

1. Apple v. Samsung: Jury Verdict Lacks Sufficient Detail To Support Enhanced DamagesThe relative paucity of design patent jurisprudence regarding the legal remedy of damages and the equitable remedy of an accounting for the infringer’s profits, makes clear that while an award of damages for patent infringement may be enhanced under 35 U.S.C. § 284 for willful infringement, and award of profits under 35 U.S.C. § 289, may not be enhanced under Section 284. While this distinction may appear important to one who wishes to obtain an enhancement of the damages award for willful infringement, the jury verdict form in Apple v. Samsung leaves one clueless as to whether the monetary award...
2. E.D. of TX Rejects Design Patent Point of Ornamentality TestIn a recent decision, the Eastern District of Texas has clarified the proper role of functionality in claim construction for design patents. By statute, design patents must be directed to “ornamental designs for an article of manufacture.” As a result, courts have struggled with how and when functional aspects of a design should be considered [...]...
3. Apple vs Samsung: The Smartphone Patent War ContinuesWhy is this fight so important? It could be a crucial decision for both companies, with the winner gaining leverage in the fast-paced and ever-growing billion dollar market. Each side wants to protect their stake, since they risk losing their high position on the mobile leaderboard as so many companies before them have done. Prime examples of companies that were once at the top of the game but are nowhere to be seen are BlackBerry and Nokia. Both of these were once the biggest names in mobile phones and handheld devices, but lost their edge once new technology started coming...

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2012/10/15/the-mysterious-disappearance-of-functionality-considerations-in-apple-v-samsung-design-patent-claim-construction/id=28875/feed/ 1 http://www.ipwatchdog.com/2012/01/23/ordinary-plain-meaning-defining-terms-in-a-patent-application/id=21918/ http://www.ipwatchdog.com/2012/01/23/ordinary-plain-meaning-defining-terms-in-a-patent-application/id=21918/#comments Tue, 24 Jan 2012 01:19:11 +0000 Gene Quinn http://www.ipwatchdog.com/?p=21918 Related posts:

1. The Doctrine of Claim Differentiation: Who Got It Right in Retractable Technologies?Whether the term “body” encompassed “multi-piece” structures became the crux of the claim construction issues in Retractable Technologies. The District Court for Eastern Texas, apparently applying the doctrine of claim differentiation, construed independent Claims 1 and 43 to cover a “body” which might be a “multi-piece” structure. Accordingly, the District Court denied post-trial motions by the alleged infringer (Becton Dickinson or “BD”) to overturn the jury verdict that BD infringed these Claims of the ‘224 patent. Judge Lourie (writing for the panel majority) reversed the District Court, ruling that the term “body” was limited to a “one-piece” structure in light...
2. CAFC Refuses to Clarify Claims Construction Law, DeferenceI have wondered out loud whether the Judges of the Federal Circuit realize that the outcome is unpredictable until the panel has been announced. It seems that at least some do. How is that defensible? How do others not on the Court not see a problem? The law needs to be certain and predictable and at the Federal Circuit far too many times it is neither. Claims construction is but one of the areas as clear as mud. The Federal Circuit was created to bring certainty to the law, but what has transpired over the course of the last 10...
3. A Primer on Indefiniteness and Means-Plus-FunctionThe basic law relative to § 112, ¶6 explains that a decision on whether a claim is indefinite under § 112, ¶ 6 requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Traditionally, claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art. The question with means-plus-function claiming, however, is whether evidence from that mythical individual skilled in the art is even admissible. No structure in the specification means the person of skill...

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2012/01/23/ordinary-plain-meaning-defining-terms-in-a-patent-application/id=21918/feed/ 25 http://www.ipwatchdog.com/2012/01/05/court-slams-frivolous-vexatious-litigation-with-4-7-mm-in-fees/id=21618/ http://www.ipwatchdog.com/2012/01/05/court-slams-frivolous-vexatious-litigation-with-4-7-mm-in-fees/id=21618/#comments Thu, 05 Jan 2012 12:23:56 +0000 Gene Quinn http://www.ipwatchdog.com/?p=21618 Related posts:

1. Indicia of Extortion – Federal Circuit Slams Patent TrollIt was also determined that the underlying patent litigation was brought for no other reason than to extract nuisance payments despite the fact that there was no infringement. Specifically, the district court determined that Eon-Net filed the lawsuit against Flagstar had “indicia of extortion” because it was part of Eon-Net’s history of filing nearly identical patent infringement complaints against a plethora of diverse defendants, where Eon-Net followed each filing with a demand for a quick settlement at a price far lower than the cost to defend the litigation....
2. Troll Turning Point? Federal Circuit Breathes Life into Rule 11This is very good news for defendants and for the patent system. If Rule 11 is actually enforced against those who sue without a reasonable basis the bad actors will be wiped out. It will also work to identify those who are REALLY the patent trolls compared with those who are patent owner who simply seek redress for rights that are being trampled. As long as the bad actors operate the patent system will remain in jeopardy because the popular press and critics of the patent system unjustifiably paint all non-practicing entities with the same brush. Meaningful and appropriate use...
3. Inadequate Investigation Prior to Patent Infringement Lawsuit Merits Attorneys’ Fees and CostsPrior to filing the lawsuit the Plaintiff sought the opinion of patent counsel to evaluate the prospect of a patent infringement suit against the Defendants, and received such an opinion in the form of a letter from opinion counsel. A claims chart was attached to the opinion letter, which identified the limitations of the claims, the opinion counsel’s interpretation of each of the limitations, and an opinion as to whether each limitation is present in the accused product. Neither the letter nor the chart contained explanation of counsel’s claim construction and his application of the claim limitations to the accused...

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2012/01/05/court-slams-frivolous-vexatious-litigation-with-4-7-mm-in-fees/id=21618/feed/ 6 http://www.ipwatchdog.com/2011/10/31/cafc-refuses-to-clarify-claims-construction-law-deference/id=20114/ http://www.ipwatchdog.com/2011/10/31/cafc-refuses-to-clarify-claims-construction-law-deference/id=20114/#comments Tue, 01 Nov 2011 01:48:44 +0000 Gene Quinn http://ipwatchdog.com/?p=20114 Related posts:

1. The Doctrine of Claim Differentiation: Who Got It Right in Retractable Technologies?Whether the term “body” encompassed “multi-piece” structures became the crux of the claim construction issues in Retractable Technologies. The District Court for Eastern Texas, apparently applying the doctrine of claim differentiation, construed independent Claims 1 and 43 to cover a “body” which might be a “multi-piece” structure. Accordingly, the District Court denied post-trial motions by the alleged infringer (Becton Dickinson or “BD”) to overturn the jury verdict that BD infringed these Claims of the ‘224 patent. Judge Lourie (writing for the panel majority) reversed the District Court, ruling that the term “body” was limited to a “one-piece” structure in light...
2. Pressure Products v. Greatbatch: Why Another 5 Judge Panel?Nothing in the appealed issues in Pressure Products (claim construction, denial of motion for JMOL, leave to amend answer) even remotely hints at or suggests the basis for this five judge panel. In fact, Pressure Products has all the markings of a fairly ordinary, garden variety patent infringement case. So why not the standard three judge panel? Not a word of explanation....
3. Judge Kathleen O’Malley Finally Confirmed by Senate for CAFCJudge Kathleen O'Malley was confirmed by the United States Senate earlier today. O'Malley's confirmation, along with the confirmation of 18 others in recent days, is the result of a deal between Senate Democrats and Republicans that ensured passage of 19 nominations in exchange for an agreement not to move forward with other controversial nominations, including the hotly challenged nomination of Goodwin Lui, who is Associate Dean and Professor of Law at University of California Berkeley School of Law. ...

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2011/10/31/cafc-refuses-to-clarify-claims-construction-law-deference/id=20114/feed/ 3 http://www.ipwatchdog.com/2011/07/13/octrine-of-claim-differentiation-retractable-technologies/id=18098/ http://www.ipwatchdog.com/2011/07/13/octrine-of-claim-differentiation-retractable-technologies/id=18098/#comments Wed, 13 Jul 2011 13:52:58 +0000 Eric Guttag http://ipwatchdog.com/?p=18098 Related posts:

1. CAFC Refuses to Clarify Claims Construction Law, DeferenceI have wondered out loud whether the Judges of the Federal Circuit realize that the outcome is unpredictable until the panel has been announced. It seems that at least some do. How is that defensible? How do others not on the Court not see a problem? The law needs to be certain and predictable and at the Federal Circuit far too many times it is neither. Claims construction is but one of the areas as clear as mud. The Federal Circuit was created to bring certainty to the law, but what has transpired over the course of the last 10...
2. A Winning Patent Infringement Defense: Reexamination Creates Intervening Rights, Erases $29.4 Million VerdictCompanies accused of patent infringement are increasingly looking at patent reexamination at the Patent Office as an attractive avenue for challenging the patent’s validity. Reexamination offers a number of well-known advantages as a forum for such validity challenges over District Court, among them the absence of a presumption of validity and a lower burden of proof. Less well-known, however, is the potential for reexamination to eliminate an accused infringer’s liability for past damages – even if the PTO confirms the validity of a patent in reexamination, the accused infringer might be entitled to “intervening rights,” effectively eliminating past damages, if...
3. IBM Chief Patent Counsel on Patent Litigation ReformFederal Circuit Chief Judge Rader recently delivered an important and noteworthy defense of the U.S. patent system the recent annual meeting of the Association of University Technology Managers (AUTM). His ideas have merit, but let’s not presume that patent litigation reform is all that is needed or all that can be done to help. I believe that Chief Judge Rader and other patent system users should focus on additional reforms that could contribute in a substantive way....

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2011/07/13/octrine-of-claim-differentiation-retractable-technologies/id=18098/feed/ 11 http://www.ipwatchdog.com/2010/09/14/12486/id=12486/ http://www.ipwatchdog.com/2010/09/14/12486/id=12486/#comments Tue, 14 Sep 2010 22:54:17 +0000 Gene Quinn http://ipwatchdog.com/?p=12486 Related posts:

1. The Doctrine of Claim Differentiation: Who Got It Right in Retractable Technologies?Whether the term “body” encompassed “multi-piece” structures became the crux of the claim construction issues in Retractable Technologies. The District Court for Eastern Texas, apparently applying the doctrine of claim differentiation, construed independent Claims 1 and 43 to cover a “body” which might be a “multi-piece” structure. Accordingly, the District Court denied post-trial motions by the alleged infringer (Becton Dickinson or “BD”) to overturn the jury verdict that BD infringed these Claims of the ‘224 patent. Judge Lourie (writing for the panel majority) reversed the District Court, ruling that the term “body” was limited to a “one-piece” structure in light...
2. A Primer on Indefiniteness and Means-Plus-FunctionThe basic law relative to § 112, ¶6 explains that a decision on whether a claim is indefinite under § 112, ¶ 6 requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Traditionally, claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art. The question with means-plus-function claiming, however, is whether evidence from that mythical individual skilled in the art is even admissible. No structure in the specification means the person of skill...
3. CAFC Refuses to Clarify Claims Construction Law, DeferenceI have wondered out loud whether the Judges of the Federal Circuit realize that the outcome is unpredictable until the panel has been announced. It seems that at least some do. How is that defensible? How do others not on the Court not see a problem? The law needs to be certain and predictable and at the Federal Circuit far too many times it is neither. Claims construction is but one of the areas as clear as mud. The Federal Circuit was created to bring certainty to the law, but what has transpired over the course of the last 10...

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2010/09/14/12486/id=12486/feed/ 7 http://www.ipwatchdog.com/2010/03/26/pressure-products-v-greatbatch-why-another-5-judge-panel/id=9835/ http://www.ipwatchdog.com/2010/03/26/pressure-products-v-greatbatch-why-another-5-judge-panel/id=9835/#comments Fri, 26 Mar 2010 20:50:54 +0000 Eric Guttag http://www.ipwatchdog.com/?p=9835 Related posts:

1. The Strange Case of Martek Biosciences v. NutrinovaThe Federal Circuit has recently issued some highly controversial decisions, such as In re Bilski now before the U.S. Supreme Court. But possibly the strangest this year is Martek Biosciences Corp. v. Nutrinova, Inc. What makes Martek Biosciences strange is not so much the argument between the majority and dissent about whether the claim term [...]...
2. CAFC: Reliance on Unrelated Licenses Doom Damage Awardthe patented technology involved screen recognition and terminal emulation processes to download a screen of information from a remote mainframe computer onto a local personal computer (PC). Basically, the patented technology facilitated the ability of the PC to operate like earlier “dumb terminals” in recognizing information sent by a mainframe connected to the PC. The alleged infringing terminal emulator program called “NewLook” was developed in Australia (by Looksoftware Proprietary Limited) but was sold by Lansa, Inc. (Lansa) in the U.S....
3. Not Losing the Forest for the Trees: Newman Concurs in AriadComing as no surprise, a majority of the en banc Federal Circuit just ruled in Ariad Pharmaceuticals v. Eli Lilly &Co. that there is there is a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112. Also not surprisingly, there were multiple concurring (and dissenting) opinions. Judge Lourie (writing the majority opinion) has now won the on-going debate that has raged between him and Judge Rader (who has strenuously argued there is no written description requirement separate and distinct from the “enablement” requirement) since the 1997 case of Regents of the University of California...

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2010/03/26/pressure-products-v-greatbatch-why-another-5-judge-panel/id=9835/feed/ 5 http://www.ipwatchdog.com/2009/12/08/cafc-rules-claim-terms-must-be-construed-in-context/id=7613/ http://www.ipwatchdog.com/2009/12/08/cafc-rules-claim-terms-must-be-construed-in-context/id=7613/#comments Tue, 08 Dec 2009 20:37:06 +0000 Eric Guttag http://www.ipwatchdog.com/?p=7613 Related posts:

1. CAFC Rules “Secret Prior Art” Requires Only Appreciation that Invention Made in Teva Pharmaceutical*The doctrines of “secret prior art” and “inherency” both merged in the case Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP to surprise, and unpleasantly upend the patentee. Judge Linn’s opinion ruled that “[a]n inventor need not understand precisely why his invention works in order to achieve an actual reduction to practice.” Relying upon the collective holdings in Dow Chemical, Mycogen Plant Science, and Invitrogen, the Federal Circuit panel then concluded that “it is apparent that the district court correctly entered summary judgment” of invalidity of the asserted claims in the ‘502 patent under 35 § 102(g)(2)....
2. CAFC Judge Plager Says Definiteness Requirement Needs TeethAs I’ve said before, no one could rightly accuse me of being biased against patents. But, as I also pointed out in this article on Judge Rader’s dissent in Media Technologies Licensing, LLC v. The Upper Deck Company, I don’t believe every patent is “bullet proof,” or to use Judge Plager’s phrase, that some patents aren’t built on “quicksand.” In fact, I agree with Judge Plager’s dissent in the denial of rehearing en banc in Enzo Biochem, Inc. v. Applera Corp., issued May 26, 2010, which argues that the “definiteness” requirement in the second paragraph of 35 U.S.C § 112...
3. The Bilski Oral Argument Speaks Volume: Start with 35 U.S.C. § 112After Monday’s oral argument, many are trying to divine how the U.S. Supreme Court will rule in the Bilski v. Kappos, and whether the Federal Circuit’s “machine or transformation” test will survive. Having now read the oral argument transcript, my own prognostication is that the Federal Circuit’s “machine or transformation” test will be trounced as [...]...

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2009/12/08/cafc-rules-claim-terms-must-be-construed-in-context/id=7613/feed/ 15 http://www.ipwatchdog.com/2009/01/21/does-the-federal-circuit-give-enough-deference/id=1701/ http://www.ipwatchdog.com/2009/01/21/does-the-federal-circuit-give-enough-deference/id=1701/#comments Wed, 21 Jan 2009 22:23:09 +0000 Mark Malek http://www.ipwatchdog.com/?p=1701 Related posts:

1. Heightened Judicial Deference for Patent Claim Constructions?Patent litigants have long expected an appeal to follow nearly every jury verdict and that a key question (if not the key question) on appeal will be the district court’s construction of one or more disputed claim terms. Syntrix’s recent infringement verdict against Illumina would be seen as no exception if not for what happened the very next day -- the Federal Circuit’s decision to rehear en banc the panel’s decision in Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp. to consider whether to reset the standard of review for claim construction, long recognized as a question of...
2. CAFC Grants En Banc Review of BPAI to District Court AppealOn February 17, 2010, the United States Court of Appeals for the Federal Circuit issued an order in Hyatt v. Kappos vacating the previous decision issued by a 3 judge panel on August 11, 2009, when the case was then styled Hyatt v. Doll. Hyatt's petition for rehearing was denied. After polling the judges of the Federal Circuit, however, rehearing en banc was granted on whether 35 USC 145 requires de novo review and the submission of new evidence. ...
3. Do Patent Applicants have a Chance at the CAFC?Do patent applicants appealing a rejection of their claims from the Patent Trial and Appeals Board have a chance of success at the Court of Appeals for the Federal Circuit? What about patentees appealing to the CAFC from rejections in reexamination proceedings? The candid answer is not much of a chance. Of course, every case is different and needs to be considered on its own merits. Yet, the standards for review of Board decisions, followed by the CAFC, significantly favor affirmance of those decisions....

Related posts brought to you by Yet Another Related Posts Plugin. ]]> http://www.ipwatchdog.com/2009/01/21/does-the-federal-circuit-give-enough-deference/id=1701/feed/ 0