On December 13, 2013, in Suprema, Inc. v. Int'l Trade Comm'n, the U.S. Court of Appeals for the Federal Circuit (Prost, O'Malley,* Reyna) affirmed-in-part, vacated-in-part and remanded-in-part the Commission's...more
On December 16, 2013, in Motorola Mobility LLC v. Int'l Trade Comm'n, the U.S. Court of Appeals for the Federal Circuit (Rader,* Prost, Taranto) affirmed the Commission's determination, inter alia, that Motorola violated 19...more
On December 13, 2013, in CBT Flint Partners, LLC v. Return Path, Inc., the U.S. Court of Appeals for the Federal Circuit (Dyk, O'Malley, Taranto*) reversed-in-part, vacated-in-part and remanded the district court judgment...more
On December 11, 2013, in Galderma Labs., L.P. v. Tolmar, Inc., the U.S. Court of Appeals for the Federal Circuit (Newman, Bryson, Prost*) reversed the district court's judgment that U.S. Patents No. 7,579,377, No. 7,737,181,...more
[T]here is no "supplier exception" to the on-sale bar, [and] it is of no consequence that the "commercial offer for sale" [was] made by [the patentee's] own supplier and was made to [the patentee] itself....more
While an adverse claim construction generally cannot, alone, form the basis for an exceptional case finding, [a] party cannot assert baseless infringement claims and must continually assess the soundness of pending...more
While the facts may show that damages would be reparable, this assumption is not sufficient [for purposes of a preliminary injunction analysis]....more
An expert witness may not testify to subject matter beyond the scope of the witness's expert report unless the failure to include that information in the report was "substantially justified or harmless."...more
[E]vidence relating to all four Graham factors -- including objective evidence of secondary considerations -- must be considered before determining whether the claimed invention would have been obvious to one of skill in the...more
Where a court holds a claim obvious without making findings of secondary considerations, the lack of specific consideration of secondary considerations ordinarily requires a remand....more
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
A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring....more
"[Where the court relies on a patent holder's] representations to defeat [jurisdiction over the declaratory judgment claims], those representations are binding as a matter of judicial estoppel [even in the absence of a...more
"[A]n ITC order terminating an investigation on the basis of an arbitration agreement [is] an appealable final determination under 19 U.S.C. § 1337(c) [over which the Federal Circuit has] jurisdiction under 28 U.S.C. §...more
In disclaiming claim coverage in light of certain prior art, the applicant does not thereby act as a lexicographer, redefining individual words....more
"There is no requirement in 35 USC 112 that an applicant point out which of his embodiments he considers his best mode; that the disclosure includes the best mode contemplated by the applicant is enough to satisfy the...more
[P]ermitting state courts to adjudicate disparagement cases (involving alleged false statements about U.S. patent rights) could result in inconsistent judgments between state and federal courts [but] this possibility of...more
“[A]n agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a ‘public use’ where there is not commercial exploitation” [even] when an unaffiliated third party is responsible for...more
Expert testimony [may be] required not only to explain what the prior art references disclosed, but also to show that a person skilled in the art would have been motivated to combine them in order to achieve the claimed...more
"[T]he same claim term can have different constructions depending upon the context of how the term is used within the claims and specification."...more
On May 10, 2013, in Sanofi-Aventis Deutschland GmbH v. Genentech, Inc., the U.S. Court of Appeals for the Federal Circuit (Rader, Dyk, Reyna*) affirmed the district court's denial of Genentech's motion to enjoin Sanofi from...more
The "Commission is fundamentally a trade forum, not an intellectual property forum" [and] litigation expenses directed at preventing, instead of encouraging manufacture of, articles incorporating patented technology does not...more
[T]hough much is published today discussing the proper approach to the patent eligibility inquiry, nothing said today beyond our judgment has the weight of precedent....more
On May 13, 2013, in Bowman v. Monsanto Co., the U.S. Supreme Court upheld the Federal Circuit's affirmance of the district court's judgment that Bowman infringed U.S. Patents No. 5,352,605 and No. RE39,247, which related to...more