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R&D Expenditures Need Only Relate to Subset of Domestic Industry Product

Addressing a decision by the US International Trade Commission finding a violation of Section 337 based on importation of certain TV products, the US Court of Appeals for the Federal Circuit agreed that the patent holder had...more

Present-Tense Claim Terms Not Sufficient to Require Actual Operation

The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (Commission) decision that found no violation of Section 337 due to noninfringement. The Court disagreed with the Commission that...more

“Configured to” or “Capable of”: That Is the Question

Addressing Patent Trial and Appeal Board (PTAB) inter partes review (IPR) decisions finding some, but not all, challenged claims unpatentable, the US Court of Appeals for the Federal Circuit affirmed the PTAB’s determination...more

Extrinsic Evidence Not Required to Overcome Means-Plus-Function Interpretation

Addressing construction of claims including means-plus-function claim elements, the US Court of Appeals for the Federal Circuit overturned an International Trade Commission (ITC) plain and ordinary meaning construction in...more

Claims Not Limited to Unrecited Aspect Unless the Intrinsic Record Shows Criticality

Addressing the construction of a claim directed to an energy-efficient lighting device, the US Court of Appeals for the Federal Circuit overturned a narrow district court construction that limited the claims to an unrecited...more

Broadest Reasonable Interpretation Is Not Broadest Possible Interpretation

Addressing an unpatentability decision of the Patent Trial and Appeal Board (PTAB or Board) that turned on claim construction, the US Court of Appeals for the Federal Circuit explained that the broadest reasonable...more

Look to Specification to Interpret Facially Unclear Claims

Addressing claim construction issues, the US Court of Appeals for the Federal Circuit reiterated the necessity of reading claims in the context of the written description when they are not clear on their face. Howmedica...more

Inconsistent and Confusing Specification Language Does Not Support Broad Claim Construction - Trustees of Columbia Univ. v....

Addressing various claim constructions that led to a stipulated judgment of non-infringement and partial invalidity, the US Court of Appeals for the Federal Circuit affirmed two claim constructions and a related...more

Motion to Amend in IPR Must Establish Patentability Over Prior Art from Original Prosecution - Prolitec, Inc. v. ScentAir...

Addressing whether a patentee must show that proposed claim amendments in an inter partes review (IPR) overcome not only the prior art in the IPR but also the prior art from the original prosecution, the U.S. Court of Appeals...more

Steps that Simply Map Out an Application on a Computer Do Not Confer Patent Eligibility - Intellectual Ventures I LLC v. Capital...

Again addressing the issue of subject-matter eligibility of computer-implemented claims, the U.S. Court of Appeals for the Federal Circuit found two patents to be directed to non-eligible subject matter, concluding that the...more

IP Update, Vol. 16, No. 10, October 2013

No Case or Controversy in DJ Against Patentee Who Sued Manufacturer’s Customers: Cisco Systems, Inc. v. Alberta Telecommunications Research Center - In a non-precedential opinion addressing declaratory judgment...more

IP Update, Vol. 16, No. 5, May 2013

Patent Exhaustion Rejected: Patented Seed Purchaser Has No Right to Make Copies: Bowman v. Monsanto Co. - In a narrow ruling that reaffirms the scope of patent protection over seeds, and possibly over other...more

IP Update, Vol. 15, No. 12, December 2012

In This Issue: Patents - ..Federal Circuit Rules It’s Own Standards Apply When Considering Preliminary Injunctions ..Preliminary Testing of Medical Devices in Animals Enables Their Use in...more

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