On July 22, 2013, in Novozymes A/S v. DuPont Nutrition Biosciences APS, the U.S. Court of Appeals for the Federal Circuit (Rader, Schall,* Bryson) affirmed the district court's judgment as a matter of law that U.S. Patent No....more
When the Board relies upon a new ground of rejection not relied upon by the examiner, the applicant is entitled to reopen prosecution or to request a rehearing [unless the applicants] have had fair opportunity to react to the...more
In disclaiming claim coverage in light of certain prior art, the applicant does not thereby act as a lexicographer, redefining individual words....more
On April 19, 2013, in Lazare Kaplan Int'l, Inc. v. Photoscribe Techs., Inc., the U.S. Court of Appeals for the Federal Circuit (Lourie,* Dyk, Reyna) reversed-in-part, vacated-in-part and remanded the district court's summary...more
On April 5, 2013, in In re Morsa, the U.S. Court of Appeals for the Federal Circuit (Rader, Lourie, O'Malley*) affirmed-in-part, vacated-in-part and remanded the USPTO Board of Patent Appeals and Interferences decision...more
On March 20, 2013, in Abbott Labs. v. Cordis Corp., the U.S. Court of Appeals for the Federal Circuit (Rader, Dyk,* Reyna) affirmed the district court's grant of Abbott's motion to quash two subpoenas duces tecum issued...more
"[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation, [or the reference] cannot inherently anticipate the claims."...more
[T]he preamble constitutes a limitation when the claim(s) depend on it for antecedent basis, or when it "is essential to understand limitations or terms in the claim body."
On December 27, 2012, in C.W. Zumbiel Co. v....more
[A] third party cannot sue the PTO under the APA to challenge a PTO decision to issue a patent.
On December 6, 2012, in Pregis Corp. v. Kappos, the U.S. Court of Appeals for the Federal Circuit (Prost, Clevenger,...more
[When a patent issues] with its terminal disclaimer in effect, that disclaimer [becomes part of the "original patent" for purposes of 35 U.S.C. § 251 and serves] to define its term, regardless of any further term that might...more