In re Giacomini, No. 09-1400, 2010 WL 2674461 (Fed. Cir. July 7, 2010).
Patent applicants on a prior art treasure hunt will have a harder time after the In re Giacomini decision. In Giacomini, the Federal Circuit addressed the questions of so-called "secret prior art" under § 102(e) and specifically held that an issued patent will be considered prior art as of the date of its appropriately filed provisional patent application. Because of the large number of provisional...
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Bilski v. Kappos
There's been an unexpected plot twist in the story line of business method patents. It looked to many like such inventions (including many software patents) were doomed following an en banc Federal Circuit decision that required process-based inventions to pass the "machine or transformation test" to remain eligible for patenting. Enter Bilski v. Kappos. Justice Kennedy, writing for the...
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Leviton Manufacturing Co., Inc. v. Universal Security Instruments, Inc.
Slip that inequitable conduct claim back on the summary judgment "barbie"-the standard for establishing such claims as a matter of law is not quite done. In Leviton Manufacturing Co., Inc. v. Universal Security Instruments, Inc. a majority of the Federal Circuit vacated the district court's award of summary judgment for inequitable conduct and vexatious litigation as well as the court's...
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ResQNet.com, Inc. v. Lansa, Inc.
In ResQNet.com, Inc. v. Lansa, Inc. , 594 F.3d 860 (Fed. Cir. 2010) a panel of the Federal Circuit seems to re-shuffle the deck on what constitutes competent royalty rate evidence when assessing damages for patent infringement. The panel's majority said the district court erred by considering license agreements which re-bundled the technology covered by the patent because the agreements did not...
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Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.
It looks like the rules of grammar may have become part of patent litigation's natural selection process. In Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., the Federal Circuit en banc took up the issue of whether 35 U.S.C. § 112 contains a written description requirement separate and apart from the enablement requirement. A majority of the Federal Circuit decided it does, relying principally...
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Forest Group, Inc. v. Bon Tool Co.
Anyone spinning the bottle on a decision to mark their patent on an item known to lack patent protection should first consider the decision in Forest Group, Inc. v. Bon Tool Co . In Forest, the Federal Circuit found that 35 U.S.C. § 292's false marking prohibitions require the imposition of a penalty for each item falsely marked as patented when the requisite intent to deceive exists. The false...
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i4i Limited Partnership v. Microsoft Corp.
In i4i Limited Partnership v. Microsoft Corp., the Federal Circuit reminds the patent litigation bar that there are just some squares in the patent law game that can't be skipped. It turns out Rule 50 of the Federal Rules of Civil Procedure can have a monopoly on the successful appeal of patent infringement verdicts and the failure to move at trial. Judgment as a Matter of Law (JMOL) under Rules...
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Hewlett-Packard Company v. Acceleron LLC
The Federal Circuit says: "declaratory judgment jurisdiction," even if the patent holder’s notice letter waltzes around phrases like "infringement" or "assertion." In Hewlett-Packard Company v. Acceleron LLC , the patent holder sent a letter that avoided using those phrases while still implying the possibility of litigation. The Federal Circuit said a patent holder cannot...
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Iovate Health Services, Inc. v. Bio-Engineered Supplements & Nutrition, Inc.
No. 2009-1018 (Fed Cir. 11/19/2009)
Prior publication left the patent holder in Iovate Health Services, Inc. v. Bio-Engineered Supplements & Nutrition Inc ., No. 2009-1018 (Fed Cir. 11/19/2009) with sand in its face and an invalid patent. The patent in Iovate covered a method for "enhancing muscle performance or recovery from fatigue" through the use of specific nutritional supplements. The Federal Circuit found that a...
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Stanford University v. Roche Molecular Systems
The decision in Stanford University v. Roche Molecular Systems demonstrates the importance of sorting out the players when it comes to patent ownership and when multiple assignments of patent rights occur. Patent holder Stanford University brought an action for patent infringement against alleged infringer Roche. Stanford based its claim for patent ownership (in part) upon a written promise by one...
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Cardiac Pacemakers Inc. et al. v. St. Jude Medical, Inc. et al.
Since the days of Stanislavski and Strasberg, aspiring thespians have been schooled in the ways of "method acting." Under this technique, an actor strives to emulate a character's emotional and psychological state through various exercises. Critics of method acting chide it as lacking substance and pretentious. In fact, legend has it that, when he was preparing for a tense scene in the...
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Exergen Corporation v. Wal-Mart Stores, Inc.
Budding members of the fourth estate are schooled in the art of information gathering through the use of the formula known as the "five W's" - who, what, when, where, why and how (go figure on the "how" part . . . it's journalistic license). Although lawyers and the press have been known to clash from time to time, the Federal Circuit has recently adopted this journalistic...
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Epistar Corp. v. International Trade Commission
Sometimes, the merger of two companies requires a sorting of the Cinderellas from the ugly stepsisters when it comes to pre-existing contractual relationships. The decision in Epistar Corp. v. International Trade Commission involves one such blended family tale. There, after a merger, the alleged infringer found itself with separate licensing agreements that both prohibited and allowed invalidity challenges...
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Rescuecom Corp. v. Google Inc.
Trademark holders, start your engines! - Internet search engine that is. After the Second Circuit's decision in Rescuecom Corp. v. Google Inc. , trademark holders may finally be able to go after entities like Google for trademark infringement. Don't race off to the courthouse just yet though. Taking the facts alleged in the complaint as true (as required on the appeal of a 12(b)(6) motion)...
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Larson Manufacturing Co. v. Aluminart Products Ltd.
Is Larson Manufacturing Co. v. Aluminart Products Ltd. the end of what has been, for some, the classic patent game of asserting inequitable conduct? In an effort to stop one of the favorite pastimes of some accused infringers, the Federal Circuit in Larson puts a pox on lower courts' use of loose evidentiary inferences when considering claims of deceptive intent. It's too soon, however, to...
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