Last Month at the Federal Circuit - July 2011

more+
less-

In this issue: Bayh-Dole Act Does Not Automatically Vest Title to Federally Funded Inventions in Federal Contractors; 35 U.S.C. § 282 Requires That an Invalidity Defense Be Proved by Clear and Convincing Evidence, but a Jury May Be Instructed to Evaluate Whether the Evidence Before It Is Materially New; 35 U.S.C. § 282 Requires That an Invalidity Defense Be Proved by Clear and Convincing Evidence, but a Jury May Be Instructed to Evaluate Whether the Evidence Before It Is Materially New; Stream of Commerce Analysis Does Not Support General Jurisdiction over a Foreign Corporation; No Personal Jurisdiction Exists over a Foreign Party Because Simply Placing Goods in the Stream of Commerce, Without More, Is Not an Act Purposefully Directed to the Forum State; Accused Infringer Need Not Practice Steps Recited in the Preamble of a Method Claim When the Preamble Defines the Environment in Which the Claim Operates; Nonanalogous Prior Art Cannot Support an Obviousness Rejection; State of the Art Could Not Fill the Gaps in Disclosure for Written Description Support Where the Specifications Indicated Unpredictability and a Lack of Knowledge in the Art; The Read “Enhanced Damages” Standard Must Be Applied Separately from the Seagate “Willful Infringement” Standard; Claim Terms Held Are Not Means-Plus-Function Limitations When Claim Language, in View of Written Description, Recites Sufficiently Definite Structure; Prior Art Range Encompassing the Claimed Invention Creates a Rebuttable Presumption of Obviousness; “Competing Patents” Not Sufficient to Confer DJ Jurisdiction; and Materiality and Intent Are Not a Part of Sliding Scale in Inequitable Conduct Analysis.

Excerpts from 'Bayh-Dole Act...':

Chief Justice Roberts delivered the opinion of the Court, in which Justices Scalia, Kennedy, Thomas, Alito, Sotomayor, and Kagan joined. Justice Sotomayor filed a concurring opinion. Justice Breyer filed a dissenting opinion, in which Justice Ginsburg joined.

In Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., No. 09-1159 (U.S. June 6, 2011), the Supreme Court held that the University and Small Business Patent Procedures Act of 1980 (the “Bayh-Dole Act” or “Act”) does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.

Please see full publication below for more information.

LOADING PDF: If there are any problems, click here to download the file.