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 not necessary where no algorithm was disclosed.

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 Federal Circuit’s view of the Federal Arbitration Act that appears to favor enforcing agreements to arbitrate.

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)

Yesterday, Tues., Mar. 20, 2012, in Mayo Collaborative Svcs v. Prometheus Labs, No. 10-1150, the Supreme Court (Breyer) unanimously reversed the Federal Circuit and ruled that a claimed process for assessing proper drug dosage was unpatentable under Section 101 because it was broadly directed to simply applying a law of nature in otherwise conventional drug treatment procedures.  This decision may significantly impact not only pharmaceuticals, but software or other technology that involve applying laws of nature or mathematical formulas.

Continue Reading Patent Alert: Supreme Court rules drug administration process unpatentable because it simply applied law of nature to otherwise conventional drug treatment procedures (Mayo v. Prometheus)

Today, Thu., Mar. 15, 2012, in Marine Polymer v. Hemcon, No. 2010-1548, the Federal Circuit en banc (Opinion by Lourie; Dissent by Dyk) in a split decision ruled that intervening rights do not arise for claims that were not amended or added in reexamination even if arguments during reexamination changed the claim scope.  The Majority ruled that the first step in assessing intervening rights is to determine whether claims were amended or added in reexamination.  If not, then the court should not proceed to the second step of determining whether there were substantive changes to claim scope.

Continue Reading Patent Alert: Split en banc Federal Circuit rules no intervening rights for reexamined claims not amended/new (Marine Polymer v. Hemcon)

Today, Wed., Mar. 14, 2012, in Aspex Eyewear v. Marchon Eyewear, No. 2011-1147, the Federal Circuit (Rader, Bryson and Reyna) ruled that res judicata barred a patent owner from asserting new and amended claims issued from reexamination against products that were found not to infringe the original patent.  The Court also ruled that a patent owner may include new products in a pending litigation, but is not required to do so.  Issue preclusion, however, may apply to those new products in a following action.

Continue Reading Patent Alert: Federal Circuit rules res judicata bars action on claims amended or added in reexam (Aspex Eyewear v. Marchon Eyewear)

On Wed., Mar. 7, 2012, in Digital Vending v. Univ. of Phoenix, No. 2011-1216, the Federal Circuit (Rader, Linn and Moore (dissent-in-part)) issued a split decision on whether there had been a clear disavowal of claim scope.  Judge Moore concluded that “[i]t is difficult to imagine a clearer case of disavowal.”  The Majority, however, found that “the careful distinctions in specification descriptions avoid any hint that the inventors clearly disavowed claim scope with respect to the method claims.”

Continue Reading Patent Alert: Federal Circuit split on claim scope disavowal (Digital Vending v. Univ. Phoenix)