[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
§ 251 suggests to a potential licensee that -- in the absence of contrary language in the licensing agreement -- a license under the patent that is not directed to any specific claims, field of use or other limited right will...more
As a threshold issue in any monopolization claim, the court must identify the relevant market.
On December 17, 2012, in IGT v. Alliance Gaming Corp., the U.S. Court of Appeals for the Federal Circuit (Bryson, Linn,...more
[A] finding of no competition for the purpose of irreparable harm conflicts with the clear finding of competition for the purpose of awarding damages.
On December 19, 2012, in Presidio Components, Inc. v. Am. Tech....more
"The law does not require that no competent attorney or alert inventor could have avoided the error sought to be corrected by reissue."
On December 14, 2012, in In re Rosuvastatin Calcium Patent Litig., the U.S. Court of...more
[W]e have emphatically rejected any formal burden-shifting framework in evaluating the four Graham factors [including the objective considerations of nonobviousness]. The district court's failure to consider the evidence...more
Given Congress' legitimate concerns with respect to the cost and constitutionality of pending qui tam actions, we conclude that the retroactive application of amended § 292 to pending actions was a rational means of pursuing...more
[W]hen determining whether there was a Rule 11 violation, "the standard under which an attorney is measured is an objective, not subjective standard of reasonableness under the circumstances." [Thus, an evaluation of the...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
[R]es judicata [may attach where] the present matter relates to patent invalidity, misuse, and unenforceability [and] the prior case dealt only with enforcing the "all reasonable efforts to market and sell" under [a license...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
[T]he commercial success of the embodiment with additional unclaimed features is to be considered when evaluating the obviousness of the claim, provided that embodiment's success has a sufficient nexus to the claimed and...more
"[A]lthough § 102(g) prior art must be somehow made available to the public in order to defeat another patent, a § 102(g) prior inventor is under no obligation to file a patent application." Commercialization has been relied...more
[T]he estimated likelihood of success in establishing infringement is governed by Federal Circuit law. [A movant for a preliminary injunction in a patent case] need not meet [the] heightened "clear or substantial likelihood"...more
[Claim preclusion does not arise merely because the plaintiff was aware of independent facts that gave rise to a separate cause of action against the defendant at the time it brought suit. [A prior trademark infringement...more
To assess whether a claim is indefinite, [we] do not "look to the knowledge of one skilled in the art apart from and unconnected to the disclosure of the patent." We rather "look at the disclosure of the patent and determine...more
[W]e have rarely held that objective evidence is sufficient to overcome a prima facie case of obviousness [but in certain cases] the objective evidence "establish[es] that an invention appearing to have been obvious in light...more
Because the person having ordinary skill in the art is a "theoretical construct" and is "not descriptive of some particular individual," "a person of exceptional skill in the art" should not be disqualified because he or she...more
A § 256 claim for correction of inventorship does not accrue until the patent issues. [T]he failure to challenge inventorship before the PTO [does not] bar an inventor from later contesting inventorship under § 256.
...more