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Today, Wed., Apr. 18, 2012, in Kappos v. Hyatt, No. 10-1219, the Supreme Court (Thomas) (Sotomayor and Breyer concur) affirmed the Federal Circuit’s ruling that permits new evidence in an appeal to a district court under Section 145 from an adverse Patent Office ruling on a patent application.
Continue Reading Patent Alert: Supreme Court rules district court hearing appeal from PTO may consider new evidence and make de novo fact finding (Kappos v. Hyatt)

Today, April 16, 2012, the Federal Circuit announced that the upcoming May 17 shift to electronic filing will make MANDATORY the electronic filing of ALL case documents for cases opened or reinstated March 1 or later.  “No filing in paper by attorneys will be permitted beyond the effective date unless authorized by the court’s ECF rules.”  Also, electronic filing is not permitted before May 17.  The announcement does not provide for any transition period.  The full ECF rules, however, have not yet been released.
Continue Reading Patent Alert: Federal Circuit anounces rules for electronic filing

Today, Mon., Apr. 16, 2012, in Eurand v. Mylan, No. 2011-1399, the Federal Circuit (Newman, O’Malley and Reyna) reversed a bench trial judgment that pharmaceutical patents would have been obvious because the district court improperly first found obviousness and then looked to secondary indicia to rebut that finding, which led to hindsight selection of secondary indicia to support the district court’s obviousness “hunch.”   The Court ruled that there is no burden-shifting when litigating obviousness – all evidence must be considered before assessing whether the patent challenger met its burden to prove obviousness by clear and convincing evidence.
Continue Reading Patent Alert: Federal Circuit rules no burden-shifting in obviousness determination (Eurand v. Mylan)

Yesterday, Mon., Apr. 9, 2012, in Aventis v. Hospira, No. 2011-1018, the Federal Circuit (Linn, Dyk, and Prost) applied the Therasense inequitable conduct standard to affirm a district court’s ruling that two patent were unenforceable based on withheld prior art.  This may be the first Federal Circuit decision to affirm inequitable conduct under the stricter Therasense standard.
Continue Reading Patent Alert: Federal Circuit applies strict Therasense test, yet affirms patents unenforceable for inequitable conduct (Aventis v. Hospira)

Today, Mon., Apr. 9, 2012, in In re MSTG, Misc. No. 996, the Federal Circuit (Rader, Dyk and Moore) on mandamus affirmed a district court’s ruling that the patent owner must produce negotiation documents underlying settlement agreements, ruling that there was no settlement privilege to preclude such production.  This case will impact the usual discovery disputes about production of settlement documents, but leaves enough unanswered questions for further development and parties may alter litigation strategies accordingly.
Continue Reading Patent Alert: Federal Circuit rules no settlement privilege to preclude producing docs underlying settlement agreements (In re MSTG)

Today, Mon., Apr. 9, 2012, in Noah Sys. v. Intuit, No. 2011-1390, the Federal Circuit (Rader, O’Malley and Reyna) ruled that a special purpose computer-implemented means-plus-function limitation was indefinite because the patent specification did not disclose algorithms to all claimed functions.  The Court ruled that expert testimony on the adequacy of the disclosure was…

Today, Tue., April 3, 2012, in Advanced Fiber v. J&L, No. 2011-1243, the Federal Circuit (Lourie, Dyk (dissenting) and Prost) applied general claim construction principles to construe the term “perforated” that was not itself a claim term, but was part of the district court’s construction of the claim terms “screening medium.”  The Court also affirmed the summary judgment ruling of no willfulness because the invalidity and noninfringement defenses were “objectively reasonable” notwithstanding reversal on claim construction.
Continue Reading Patent Alert: Federal Circuit construes non-claim term used in claim construction and rules no willful infringement (Advanced Fiber v. J&L)

Today, Weds., Mar. 28, 2012, in Promega. v. Life Tech., No. 2011-1263, the Federal Circuit (Rader, Newman (dissenting) and Dyk) affirmed the district court’s order compelling arbitration of infringement claims under the Federal Arbitration Act based on an arbitration agreement that had been assigned among related entities.  This decision provides insight into the…

Today, Mon., Mar. 26, 2012, in 3M v. Avery, No. 2011-1339, the Federal Circuit (Rader, Lourie and Linn) reversed a district court’s ruling that it lacked declaratory judgment jurisdiction over a patent action.  This case provides insight into the fine line walked when discussing patents with a party without creating sufficient grounds for them to seek a declaratory judgment action.
Continue Reading Patent Alert: Federal Circuit provides insight of when declaratory judgment jurisdiction may exist (3M v. Avery)

Today, Mon., Mar. 26, 2012, in Ergo Licensing v. Carefusion, No. 2011-1229, the Federal Circuit (Newman (dissenting), Linn and Moore) affirmed a district court’s ruling that claim limitations “control means” and “programmable control means” – that both parties stipulated were means-plus-function limitations – were indefinite because no corresponding structure was disclosed in the specification.  This case provides incremental insight into computer-based means limitations and litigating the gray area of how specific structural disclosure must be to satisfy §112 ¶ 6.
Continue Reading Patent Alert: Federal Circuit rules computer-related means limitations indefinite because no structure or algorithm disclosed in specification (Ergo Lic. v. Carefusion)