Posts Tagged: Chief Judge Sharon Prost


Federal Circuit Affirms Doctrine of Equivalents Analysis Using Appropriate Hypothetical Claim

The Federal Circuit held that it is not the case that a patent must spell out a claim element’s function, way, and result, for the doctrine …

CAFC: Claim construction is appropriate even where term has a plain and ordinary meaning

Clare sued Chrysler for infringement of two patents on hidden storage boxes for pick-up trucks. Clare argued that the limitations do not need a construction because the …

Federal Circuit Affirms District Court on Finding of Assignor Estoppel

The Court affirmed that B/E could not challenge the validity of MAG’s patents, because of assignor estoppel. In this case, MAG acquired the patents by …

CAFC overturns $18 million verdict because jury improperly left to determine claim scope

Following a five-day trial, the jury found the asserted claims valid and infringed, and awarded Eon $18,800,000. In determining only that the terms should be given their plain …

Voluntary Narrowing of Patents Claims Waives Right to Later Jury Trial on Untried Claims

Nuance originally asserted over 140 claims from eight different patents against defendant ABBYY. The case was quickly referred to a special master for scheduling following Markman. The master …

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 …

Printed Matter Doctrine Implicates Matter That Is Claimed for What it Communicates

The Court held that printed matter must be claimed for what it communicates, and it is only afforded patentable weight if the claimed informational content has a …

Patentee must show patentability over prior art from original case to amend in IPR

The Federal Circuit affirmed a patentee’s burden included showing patentability over prior art from the patent’s original prosecution history. Prolitec failed to show that its …

CAFC uses de novo review because claim interpretation based solely on intrinsic evidence

On remand, the Federal Circuit used the de novo standard. Teva’s deferential “clear error” standard did not apply, because the district court did not make any …

CAFC Overturns PTAB IPR Decision for Refusing to Consider Motivation to Combine

On appeal, Ariosa challenged the Board’s refusal to consider the background reference because it was not identified as a piece of prior art “defining a combination …

Jury Instruction On Meaning Of Claim Term Cannot Be Challenged After Agreed To By Parties

According to Limelight, the district court’s construction of “tagging” was limited to using a “pointer” or “hook” to prepend or insert a virtual server hostname into …

Infringement Under Doctrine of Equivalents Not Established by General Similarities

Advanced Steel sued X-Body Equipment for infringement of a method of loading shipping containers with bulk material. The “proximate end” of the claimed transfer base, for moving …

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 …

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 …

Federal Circuit Affirms $15 Million Damages Award Against Samsung

Summit 6 LLC (“Summit”) sued Samsung Electronics Co. Ltd. and Samsung Telecommunications America, LLC (collectively “Samsung”) and others alleging infringement of U.S. Patent No. 7,765,482 (“the ’482 patent”), which …