Intellectual Property Law

Claims requiring an "insert" do not cover products with similar structure not "inserted"

Posted on February 08, 2008
In a decision Wednesday, the Federal Circuit affirmed a district court ruling granting summary judgment of non-infringement.  At the outset, the court noted the patent at issue had been before the court multiple times, and the claim terms at issue in this appeal had already been construed by the court in earlier cases...

Hearing on summary judgment motions in claim and continuation rules case this morning

Posted on February 08, 2008
This morning at 10:00 EST, Judge James C. Cacheris in the Eastern District of Virginia will hold a hearing on the parties' motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules.  When ruling on the preliminary injunction, Judge Cacheris granted the injunction in a ruling from the bench at the conclusion of the hearing, so it's possible that he may rule from the bench once again today...

Second Circuit: Sales pitch of slogan to credit card companies not use in commerce

Posted on February 08, 2008
In a decision Monday, the Second Circuit affirmed a district court's summary judgment in a trademark case involving the slogan "My Life. My Card."  An individual threatened to sue American Express for use of the slogan, alleging that he had superior rights in the mark based on efforts to license the phrase to various credit card companies, including American Express...

Summary of today's summary judgment hearing in the claim and continuation rule cases

Posted on February 08, 2008
As we reported earlier, Judge Cacheris took the parties' motions for summary judgment under advisement in the consolidated cases challenging the USPTO's claim and continuation rules.  Below is a summary of the hearing from our representative who was in attendance...

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Federal Circuit once again affirms that saving patented seeds for replanting is infringement

Posted on February 06, 2008
In a decision yesterday, the Federal Circuit once again affirmed a finding of infringement against a farmer who saved seeds covered by a patent to replant the following year.  The plaintiff in this case, Monsanto, has brought similar cases in the past, and they have resulted in similar outcomes...

Infringement of two claims and $74 million in damages affirmed, injunction reinstated

Posted on February 05, 2008
In a decision last week, the Federal Circuit affirmed-in-part and reversed-in-part a jury verdict of infringement of a patent owned by Tivo relating to its DVR technology.  The ruling was based on claim construction, with the court finding that, based on the correct construction of claims directed to the DVR hardware, there was no infringement of those claims...

Reply briefs filed in claim and continuation rules case; administration opposes patent reform

Posted on February 04, 2008
Late Friday, the parties filed their reply briefs in the cases challenging the USPTO's claim and continuation rules.  As with the parties' opposition filings, these briefs largely represent another repetition of the arguments raised in the parties motions for summary judgment...

Mandamus inappropriate unless no other way to get relief, even if result is unnecessary trial

Posted on February 04, 2008
In a precedential order last week, the Federal Circuit denied a petition for a writ of mandamus seeking to direct a district court to vacate its summary judgment order in favor of a patent infringement plaintiff and to enter judgment in favor of the alleged infringer...

Federal Circuit reiterates that full scope of claim must be enabled to meet enablement requirement

Posted on February 04, 2008
In a decision last week, the Federal Circuit affirmed a district court's decision holding several claims of two patents invalid for lack of enablement.  The district court held that while a portion of the scope of the claims was enabled, the full breadth of the claims were not, and as a result, the claims did not meet the enablement requirement of § 112...

Patent Reform Act of 2007 scheduled for consideration this month

Posted on February 01, 2008
The Patent Reform Act of 2007 (S. 1145) is now officially back on the radar.  It was recently placed on the Senate's calendar, and is likely to be considered by the full Senate sometime this month.  This has resulted in a corresponding increase in the lobbying efforts by those on both sides of the debate...

Tenth Circuit: Submitting eBay VeRO notice confers jurisdiciton in alleged infringer's home state

Posted on January 30, 2008
In a recent decision, the Tenth Circuit reversed a district court's dismissal of a copyright case for lack of personal jurisdiction.  The case arose out of the efforts by a copyright holder to have an eBay auction for allegedly infringing products removed via eBay's VeRO program...

Sufficient structure recited in claim limitation using "means" to prevent application of § 112 ¶ 6

Posted on January 30, 2008
In a decision yesterday, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement.  The district court held the relevant claim term was a means-plus-function limitation, as it used the word "means," as well as because in an interview summary in the prosecution history, it appeared the USPTO interpreted the term as a means-plus-function clause...

Claim construction excluding disclosed embodiment improper absent disclaimer of some kind

Posted on January 30, 2008
In a decision today, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement.  The district court's construction of one of the claim limitations resulted in certain embodiments of the invention disclosed in the figures to be excluded from the scope of the claims...

No damages for convoyed sales when no functional relationship between patented and unpatented goods

Posted on January 29, 2008
In a decision today, the Federal Circuit affirmed a district court's decision setting aside the portion of a jury verdict awarding convoyed sales to a patentee, and sustaining the portion of the verdict finding the alleged infringer had not shown invalidity via public use...

EU highest court rules ISPs not required to identify P2P users allegedly infringing copyrights

Posted on January 29, 2008
In a decision released today, the highest court in the EU, the European Court of Justice, ruled that under EU law, internet service providers (ISPs) are not required, in the course of a civil lawsuit, to disclose the identity of an individual subscriber associated with a particular IP address...

Claims to "fragile gel" indefinite even though term defined in specification

Posted on January 28, 2008
In a second decision Friday, the Federal Circuit affirmed a district court's finding of 35 U.S.C. § 112, second paragraph indefiniteness.  The term was defined in the specification, however the district court held that definition was too subjective and unclear, largely because it relied on relative terms...

Disclosure of prior art abstract only when more relevant detail known results in inequitable conduct

Posted on January 28, 2008
In a decision Friday, the Federal Circuit affirmed a district court's finding of inequitable conduct based on nondisclosure of details of a poster presentation presented at a scientific conference.  While the patentee disclosed the abstract during prosecution of the patents-in-suit, notes taken by one of the patentee's employees with much more detail of what was actually presented at the conference were not...

USPTO to start enforcing requirement that inventor oaths include reference to duty of disclosure

Posted on January 23, 2008
In a notice dated yesterday, the USPTO announced that it will begin enforcing compliance with 37 C.F.R. § 1.63(b)(3), which requires that inventor oaths include an acknowledgement of the duty to disclose information material to patentability under 37 C...

Oppositions to motions for summary judgment filed in cases challenging claim and continuation rules

Posted on January 23, 2008
Yesterday, the USPTO, Glaxo, and Dr. Tafas filed their oppositions to the motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules.  At first glance, they make many of the same arguments raised in the parties' motions for summary judgment...

Roundup of media coverage of oral arguments in Quanta v. LG

Posted on January 21, 2008
After the Supreme Court heard oral argument last week in Quanta Computer, Inc. v. LG Electronics, Inc. (No. 06-937), the media and blogosphere have begun to weigh in on the arguments.  You can find our take on the arguments in this post, or click below for a sampling of the coverage from other sources...

When market entry fee part of damages for patent infringement, permanent injunction inappropriate

Posted on January 21, 2008
In a recent decision, the Federal Circuit affirmed a finding of infringement of a patent relating to the detection and classification of Hepatitis C Virus, but remanded the case for a determination of anticipation.  In arguably the most interesting aspect of the decision, the court vacated the permanent injunction entered against the defendant...

Sixth Circuit: Some claims relating to license agreement with arbitration clause not arbitrable

Posted on January 21, 2008
In a recent decision, the Sixth Circuit considered the scope a mandatory arbitration clause in a software license agreement, and specifically whether the clause mandated arbitration of certain copyright infringement and other claims arguably related to the agreement...

Federal Circuit again tackles the meaning of "a"

Posted on January 18, 2008
In a decision this week, the Federal Circuit affirmed-in-part and reversed-in-part a district court's grant of summary judgment of non-infringement with respect to two patents relating to cleaning printing press cylinders.  Both findings were based on issues of claim construction, with one centering around an issue that has reached the Federal Circuit multiple times:  the definition of the word "a...

Oral argument in Quanta v. LG - some highlights

Posted on January 18, 2008
On Wednesday, the Supreme Court heard oral argument in Quanta Computer, Inc. v. LG Electronics, Inc. (No. 06-937), a case regarding the scope of the concept of patent exhaustion, also known as the first sale doctrine.  While the entirety of the arguments is worth a read (the transcript is available here), click below for our impressions of the arguments...

Eleventh Circuit: Trademark licensee liable for infringement when deviating from license

Posted on January 17, 2008
In a decision Tuesday, the Eleventh Circuit affirmed a district court's finding of trademark infringement against a trademark licensee.  The alleged infringer was actually licensed to use the mark owner's trademark, but did not use the mark as described in the license, instead using an abbreviated form...

Timely article in Popular Science regarding the USPTO and its backlog

Posted on January 16, 2008
The passage below is from an article in Popular Science, and is timely given the current workload of the USPTO and statements by Director Dudas that application pendency will continue to increase:The Patent Office Has Become A National DisgraceTHE Patent Office, in Washington, D...

Patent Reform Act of 2007 to be passed in 2008?

Posted on January 16, 2008
The internet is abuzz with talk that the much-maligned Patent Reform Act of 2007 (H.R. 1908 & S. 1145) may be passed in some form this month.  A draft version of the Senate Judiciary Committee's report on the bill was released earlier this week, and while it does not contain any revised provisions, it does offer a fairly detailed description of the Senate version of the bill as it currently stands...

Tomorrow at the Supreme Court: Oral argument in Quanta v. LG

Posted on January 15, 2008
Tomorrow the Supreme Court will hear oral argument in Quanta Computer, Inc. v. LG Electronics, Inc. (No. 06-937). The case will determine whether patent owners who sell products embodying their patents conditionally are able to recover damages for patent infringement if the products are subsequently sold beyond the scope permitted by the original sale...

Seventh Circuit: Injunction against use of plaintiff's copyrights and trade secrets too vague

Posted on January 14, 2008
In a decision last week, the Seventh Circuit vacated and remanded a district court's preliminary injunction in a copyright and trade secret case.  The court addressed the degree of specificity necessary for an injunction against misappropriating trade secrets and infringing copyrights, and vacated the injunction because it failed to detail the substance of the trade secret or confidential information the defendant was enjoined from using...

Paper posted on public FTP site not necessarily printed publication; summary judgment reversed

Posted on January 10, 2008
In a decision this week, the Federal Circuit vacated and remanded the district court's determination that the plaintiff's patents-in-suit were invalid as anticipated by another paper that was publicly available via the patentee's FTP site before the critical date for the span of one week, finding genuine issues of material fact as to whether the paper was "publicly accessible" as required by 35 U...

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