[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. On August 14, 2013, in Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc., the U.S. Court of Appeals for the … Continue Reading
While the facts may show that damages would be reparable, this assumption is not sufficient [for purposes of a preliminary injunction analysis]. In the face of that kind of universal assumption, patents would lose their character as an exclusive right as articulated by the Constitution and become at best a judicially imposed and monitored compulsory … Continue Reading
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 infringement claims, especially after an adverse claim construction. On August 9, 2013, in Taurus IP, LLC v. DaimlerChrysler Corp., the U.S. Court of Appeals … Continue Reading
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. On August 6, 2013, in Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., the U.S. Court of Appeals for the Federal Circuit (Rader,* Reyna, Davis) affirmed the … Continue Reading
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.” On August 7, 2013, in Rembrandt Vision Techs., Inc. v. Johnson & Johnson Vision Care, Inc., the U.S. Court of Appeals for the … Continue Reading
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.” On August 7, 2013, in Rembrandt Vision Techs., Inc. v. Johnson & Johnson Vision Care, Inc., the U.S. Court of Appeals for the … Continue Reading
[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 art at the time of invention. On August 7, 2013, in Apple, Inc. v. Int’l Trade Comm’n, the U.S. Court of … Continue Reading
“[T]he written description requirement prohibits a patentee from ‘leaving it to the . . . industry to complete an unfinished invention.'” 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 … Continue Reading
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 thrust of the rejection. On July 18, 2013, the U.S. Court of Appeals for the Federal … Continue Reading
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. On June 13, 2013, in Association for Molecular Pathology v. Myriad Genetics, Inc., the U.S. Supreme Court affirmed-in-part and reversed-in-part the Federal Circuit judgment, … Continue Reading
“[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 covenant not to sue].” On June 10, 2013, in Organic Seed Growers & Trade Ass’n v. Monsanto Co., the U.S. Court of … Continue Reading
In disclaiming claim coverage in light of certain prior art, the applicant does not thereby act as a lexicographer, redefining individual words. On June 3, 2013, in Regents of the Univ. of Minn. v. AGA Med. Corp., the Federal Circuit affirmed the district court’s summary judgment that AGA did not infringe U.S. Patents No. 6,077,281 … Continue Reading
“[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 the allegedly public use. On May 20, 2013, in Dey, L.P. v. Sunovion Pharms., Inc., the U.S. Court of Appeals for the Federal … Continue Reading
“This court also sees no reason why [the plaintiff’s] decision not to argue pre-verdict willful infringement at trial should preclude the district court from finding willful infringement for post-verdict sales.” On March 13, 2013, in SynQor, Inc. v. Artesyn Techs., Inc., the U.S. Court of Appeals for the Federal Circuit (Rader,* Lourie, Daniel) affirmed the … Continue Reading
