Posts Tagged: Judge Kathleen O’Malley


In BASCOM v. AT&T the CAFC says software patent eligible again

This case arrived at the Federal Circuit on an appeal brought by BASCOM from the district court’s decision to grant a motion to dismiss under Rule 12(…
By Gene Quinn
2 days ago 18

Federal Circuit Affirms Non-Infringement and Untimely Assertion of DOE Infringement

The Federal Circuit found that the specification explicitly supported the district court’s claim construction, which precluded a finding of infringement. Two passages specified the meaning of, …

PTAB’s Factual Findings Were Sufficient, Standard Was Improper

The Court noted that decisions related to compliance with the Board’s procedures are reviewed for abuse of discretion. As far as the “reasonable expectation of success” …

Acorda Therapeutics v. Mylan Pharmaceuticals May Not be the Last Word on Personal Jurisdiction in ANDA Cases

The Federal Circuit held that Mylan Pharmaceuticals, Inc. (“Mylan”), a generic drug manufacturer, was subject to specific personal jurisdiction in Delaware because Mylan had filed an abbreviated …

Federal Circuit: Exclusive licensee with all substantial rights can sue without patent owner

Over the course of several amendments, Disney granted increasing rights to Candella, by which Disney specifically intended to give Candella standing to sue for patent infringement. The …

BRI in IPR may be narrower than broadest ordinary meaning, broader than Phillips standard

The Court noted that the Board failed to account for how the claims and specification inform the ordinary skilled artisan as to what ordinary definition the patentee …

Restricted Sales Do Not Exhaust Patent Rights Under Supreme Court Rulings

The Federal Circuit took the case en banc to review the applicability of the patent exhaustion doctrine under Mallinckrodt and Jazz Photo, in view of the Supreme …

CAFC Dismisses Inter Partes Reexamination Appeal By a Party Who was Not Initial Requester

Waters argued that Agilent could not appeal, because Aurora was the third-party requester of the reexamination, not Agilent. The Court held that the relevant question was whether …

CAFC: District Court did not abuse discretion to allow new 101 defense after Alice

The plaintiff moved to strike the re-asserted invalidity defense under §101 as not made with good cause and as unfairly prejudicial. The defendant argued that the change was …

Federal Circuit Denies Patent Term Adjustment for Erroneous Restriction Requirement

Pfizer argued that the original restriction requirement, because it was incomplete, created a delay by failing to provide Pfizer with adequate notice of the basis for rejecting …

Negative Claim Limitations Do Not Have a Higher Written Description Standard

The Federal Circuit held that the written description requirement is met for negative claim limitations where the specification simply describes alternatives. In other words, the “reason to …

CAFC Cautions Against Limiting Invention to One Embodiment in the Specification

Imaginal appealed, arguing that the district court improperly construed the disputed claim language, because: because it: (1) ignored the written description and claim language; (2) relied too heavily on …

CAFC Says Prior Art Reference Sufficiently Enabled Based on Applicant Admissions

As applied to Morsa’s application, the Court found that the specification made numerous admissions regarding the knowledge of a person of skill at the time of …

CAFC: Reasonable royalty in design infringement only if greater than infringer’s total profits

Damages for infringement of a design patent can be recovered for the greater of: (1) total profits from the infringer’s sales under 35 U.S.C. § 289, (2) damages in …

Federal Circuit en banc rules Laches Remains Defense in a Patent Infringement Suit

Despite the Supreme Court ruling that laches is no defense to a copyright infringement action brought during the statute of limitations, the Federal Circuit ruled laches can …