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Federal Circuit: Patentee Acts as a Lexicographer to Impliedly Define Term by Consistently Referring to Feature with...

The Federal Circuit recently held that a patentee acted as its own lexicographer to define a claim term even though it did not explicitly define the term. Rather, because the patentee consistently and clearly used two terms...more

Federal Circuit: Priority Document that ‘Broadly Outlines’ Possible Structures Fails to Provide Adequate Written Description...

The Federal Circuit recently held an asserted patent was not entitled to its priority date because the priority application lacked written description support for the asserted claims. In so doing, the court explained that...more

District Court: Launch Date, Not ANDA Filing Used for Hypothetical Negotiation in ANDA Case

In a Hatch-Waxman case, the District of Delaware denied a motion for summary judgment seeking to apply the ANDA filing date as the date of the hypothetical negotiation used to calculate reasonable royalty damages. Instead,...more

Ninth Circuit: Unlike CUTSA, DTSA Does Not Require a Plaintiff to Identify Their Trade Secrets With Particularity from the Start

The Ninth Circuit recently reversed a district court’s decision to strike a plaintiff’s trade secret claims under the Defend Trade Secrets Act (DTSA) at the discovery stage. In doing so, the Ninth Circuit made clear that...more

Federal Circuit Clarifies Requirement for Reference to Qualify as 'By Another' Under Pre-AIA Sections 102(a) and (e)

The Federal Circuit recently clarified the requirement for work disclosed in a reference to qualify as “by another” under pre-AIA Sections 102(a) and (e), holding that there must be complete inventive identity between the...more

Federal Circuit: The Term 'Clinically Proven Effective' Amount Does Not Impart Patentability Over Prior Art for Claims That Also...

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the...more

District Court: Means-Plus-Function Limitations Must Appear in Combination with Other Elements to Meet Enablement Requirement

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the...more

D. Mass.: Knowledge of Parent Patent, by Itself, May Not Suffice to Show Knowledge of Child Patent for Purposes of Indirect and...

In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit...more

District Court: Permanent Injunction Includes the Reassignment of Patent Applications Appropriate for Trade Secret...

Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using...more

Federal Circuit Clarifies that Enablement of Prior Art is a Separate (and Distinct) Inquiry from Enablement of Claims in a Patent

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry...more

Federal Circuit: Statements Made During Prosecution of Parent Application Disavow Claim Scope in Subsequent Patents

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that...more

Federal Circuit: PTAB Decision of Invalidity Cannot Estop District Court Litigation on Different Claims from the Same Patent, Even...

The Federal Circuit recently refused to apply collateral estoppel to claims of a patent asserted in district court litigation based on a Patent Trial and Appeal Board (PTAB) decision finding similar claims from the same...more

District Court: Common Interest May Protect Communications with Third Parties from Discovery, but Not Always

The District of Delaware recently denied in part a motion to compel production of documents and testimony between a patentee and potential investors, valuation firms and an international bank based on the common interest...more

Federal Circuit: Private Sale by Inventor Does Not Trigger Prior Art Exception Under the AIA

The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) final written decision holding that the prior art exception of AIA Section 102(b)(2)(B) does not apply to a prior sale by an inventor when the sale is...more

District Court: Incorporation by Reference for Purposes of Anticipation Requires More than a Parenthetical

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more

Federal Circuit: Written Description and Enablement Depend on What a Patent 'Claims,' Not What the Claims Cover

The Federal Circuit recently reversed a district court decision that found a patent that did not describe after-arising technology failed to satisfy the written description requirement. In so doing, the Federal Circuit...more

District Court: Knowledge of Infringement Cannot be Inferred From Non-Production of Opinion of Counsel Letter

The District of Delaware recently rejected a patentee’s argument that non-production of an opinion letter from counsel, combined with knowledge of the patent, warranted a finding that defendant induced infringement. ...more

District Court: Factual Disputes Preclude Application of Safe Harbor to Gene Editing Technology at the Pleading Stage

The District of Delaware recently denied a motion to dismiss a patent infringement complaint involving gene editing technology that sought relief under the Safe Harbor Provision of the Hatch-Waxman Act. Specifically, the...more

Federal Circuit Vacates and Remands District Court’s Fee Award Due to Consideration of Irrelevant 'Red Flags'

The Federal Circuit vacated a district court’s fee award because the district court considered certain information that was not relevant to the question of whether plaintiff’s case was exceptional. Specifically, the Federal...more

Federal Circuit Upholds USPTO Authority to Estop Patentees from Obtaining Patent Claims 'Not Patentably Distinct' from Previously...

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more

Federal Circuit Rejects Timing Requirement for Expert Qualification Under Kyocera

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine...more

Without Concrete Evidence of Potential Infringement Liability, Petitioner Lacked Standing to Challenge PTAB’s Final Written...

The Federal Circuit dismissed an appeal from an inter partes review (“IPR”) final written decision for lack of standing where it found the appellant failed to provide evidence sufficient to show it suffered an injury in fact....more

Federal Circuit: On-Sale Bar Still Applies to Secret Use of a Patented Method Under AIA

The Federal Circuit recently affirmed an ITC holding that the AIA’s § 102 on-sale bar applies to the sale of a product made according to a secret process when that sale occurs more than one year before the patent’s effective...more

Federal Circuit: First-Filed, First-Issued Patent Sets the Term for Obviousness-Type Double Patenting Analysis Even When Granted...

In a case it described as “‘a prime example’ of when ODP does not apply,” the Federal Circuit recently reversed a decision from the District of Delaware that invalidated a claim for obviousness-type double patenting (ODP),...more

Federal Circuit: Aggregated Financial Data From Different Products That Practice Different Patents Insufficient to Establish...

In an appeal from the ITC, the Federal Circuit recently held that by presenting cumulative financial data across different products that practice various combinations of patents, appellant provided insufficient evidence for a...more

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