Back in September 2012, we posted a Patent Alert on the Federal Circuit’s decision in Medtronic v. Boston Scientific. In that case, the court held that in an action where a licensee in good standing seeks a declaratory judgment of non-infringement (so any counterclaim for infringement would be foreclosed by the existence of the
Patent Alert: En banc Federal Circuit indecisive on patent eligibility of computer-implemented inventions (CLS v. Alice)
Last Friday, May 10, 2013, in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit (en banc) issued a very divided decision in which a majority of the court affirmed that method, computer-readable medium and system patent claims on a computer-implemented invention were not patent eligible under § 101, but there was no majority consensus on the rationale as to why those claims were not patentable subject matter. As a result, this en banc decision has no precedential value beyond the specific determination of patent eligibility for the particular claims at issue. The fractured nature of the decision—and even intimations by judges on the court—indicate that this case may be primed for Supreme Court review.
This 135-page decision has seven separate opinions, summarized below. A few top-level points may be gleaned from them:
Patent Alert: Failure to Test Accused Products for Infringement Does Not Justify Award of Attorneys’ Fees under Section 285 (Checkpoint v. All-Tag)
Today, March 25, 2013, in Checkpoint Systems, Inc. v. All-Tag Security S.A., No. 2012-1085, the Federal Circuit (Newman, Lourie, and Schall) reversed both the district court’s award of $6.6 million in attorneys’ fees and the determination of an “exceptional case” under Section 285 of the Patent Act. The awarding of attorneys’ fees has received
Patent Alert: Federal Circuit holds subpoenas are not available in inter partes reexamination proceeding (Abbott Laboratories v. Cordis Corporation)
Today, March 20, 2013, in Abbott Labs. v. Cordis Corp., No. 2012-1244, the Federal Circuit held that a district court cannot issue subpoenas in conjunction with a pre-AIA inter partes reexamination proceeding because an inter partes reexamination proceeding does not constitute a “contested case” under 35 U.S.C. § 24 where the PTO has not
Patent Alert: Federal Circuit to revisit standard of review for district court’s claim construction (Lighting Ballast Control v. Philips)
On March 15, 2013, in Lighting Ballast Control LLC v. Philips Electronics North America Corp., No. 2012-1014, the Federal Circuit granted Lighting Ballast’s petition for rehearing en banc to decide the following questions: (1) whether the court should overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en
Patent Alert: Equitable Estoppel Bars Infringement Claims against Successor-in-Interest (Radio Systems v. Lalor)
Yesterday, March 6, 2013, in Radio Systems Corp. v. Lalor, No. 2012-1233, the Federal Circuit (Newman, Moore, and Reyna) held that equitable estoppel barred infringement claims for one patent against an alleged infringer’s successor-in-interest, but did not bar infringement claims for a related patent that issued after the misleading conduct began. The court also
Patent Alert: Federal Circuit delves into doctrine of equivalents and concept of vitiation (Brilliant Instruments v. GuideTech)
Today, February 20, 2013, in Brilliant Instruments, Inc. v. GuideTech, Inc., No. 2012-1018, the Federal Circuit (Dyk (dissenting-in-part), Moore, and Reyna) reversed the Northern District of California’s prior grant of summary judgment of no infringement under the doctrine of equivalents based on fact issues regarding whether a capacitor that was “part of” a
Patent Alert: Assignor estoppel is not a federal cause of action (Semiconductor Energy Lab. Co. v. Nagata)
On February 11, 2013, in Semiconductor Energy Laboratory Co. v. Nagata, No. 2012-1245, the Federal Circuit (Lourie, Bryson, and Wallach) affirmed a decision by the Northern District of California that dismissed a complaint for lack of subject matter jurisdiction. This case provides insight into the appropriateness of using a named inventor as a fact witness in an infringement action based on his or her patent.
Continue Reading Patent Alert: Assignor estoppel is not a federal cause of action (Semiconductor Energy Lab. Co. v. Nagata)
Patent Alert: Federal Circuit Finds Justiciable Controversy for Declaratory Judgment of No Indirect Infringement Liability
Today, February 5, 2013, in Arkema Inc. v. Honeywell Int’l, Inc., No. 2012-1308, the Federal Circuit (Dyk, Plager, and O’Malley) found that an Article III case or controversy over indirect infringement liability existed between two competitors in the automobile refrigerant market. This case provides incremental insight into the circumstances under which a
Patent Alert: Federal Circuit Finds No Special Requirements for Pleading Design Patent Infringement
On Fri., January 25, 2013, in Hall v. Bed Bath & Beyond, No. 2011-1165, the Federal Circuit (Newman, Lourie (dissenting-in-part), and Linn) held that a towel design patent owner properly pled claims of patent infringement, false advertising, misappropriation, and unfair competition. The Court also held that certain inventor statements on whether the towel was covered by his patent did not create liability for false advertising or false marking. This case indicates that the pleading requirements for design and utility patents are fairly similar.
Continue Reading Patent Alert: Federal Circuit Finds No Special Requirements for Pleading Design Patent Infringement