Last Month at the Federal Circuit
Last Month at the Federal Circuit

August 2012

Presumption of Validity of an Issued Patent Is Unchanged by Mistaken Issuance of a Claim or Previous Consideration of Prior Art by the PTO

[Appealed from D. Del., Judge Kugler]

Circuitry Components May Be “Coupled” Without Existing Entirely Outside of One Another

[Appealed from ITC]

Claims Directed to Statutory Subject Matter Under 35 U.S.C. § 101 Unless Unpatentability Is “Manifestly Evident”

[Appealed from D.D.C., Judge Collyer]

In Pre-2007 TTAB Cases, Party Seeking to Exclude Trial Evidence Not Produced By Adversary During Discovery Must First File Motion to Compel

[Appealed from TTAB]

“Hereby Assign” Language in Employment Agreement Automatically Assigned Rights to Employer Without the Need for an Additional Act

[Appealed from D. Wyo., Judge Johnson]

In an Interference Proceeding, a Party Can Rely on a Claim to Priority Under § 120 to Overcome a § 135(b)(2) Bar

[Appealed from Board]

Fairness Considerations Required Under Ninth Circuit Law When Determining Scope of Extrajudicial Waiver of Attorney-Client Privilege

[Appealed from N.D. Cal., Judge Fogel]

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Looking Ahead

Machine-or-Transformation Test Fails When Computer in Patent Claims Performs Only Calculations

[Appealed from E.D. Mo., Judge Jackson]

Pendent Appellate Jurisdiction Under Swint Does Not Generally Extend to Appeals of Unquantified Sanctions

[Appealed from S.D. Fla., Judge Jordan]

Case Dismissed and Sanctions Imposed for Repeated and Willful Failure to Respond to Contention Interrogatory

[Appealed from E.D.N.Y., Judge Seybert]

Anticipatory Nonpatent Publications Are Presumed Enabled
No. 11-1465 (Fed. Cir. July 27, 2012)
[Appealed from Board]

Arguments During Prosecution About Prior Art, Without Relation to Invention, Do Not Invoke Doctrine of Prosecution Disclaimer

[Appealed from C.D. Cal., Judge Zouhary]

A Company May Draft Its Own Use Code When Corrections Are Required Under 21 U.S.C. § 355(j)(5)(C)(ii)(I)

[Appealed from E.D. Mich., Judge Cohn]

Prosecution Disclaimers Must Be Clear and Unmistakable to Limit Claim Scope

[Appealed from E.D. Va., Senior Judge Hilton]

ALJ Administrative Law Judge
ANDA Abbreviated New Drug Application
APA Administrative Procedures Act
APJ Administrative Patent Judge
Board Board of Patent Appeals and Interferences
Commissioner Commissioner of Patents and Trademarks
CIP Continuation-in-Part
DJ Declaratory Judgment
DOE Doctrine of Equivalents
FDA Food and Drug Administration
IDS Information Disclosure Statement
ITC International Trade Commission
JMOL Judgment as a Matter of Law
MPEP Manual of Patent Examining Procedure
NDA New Drug Application
PCT Patent Cooperation Treaty
PTO United States Patent and Trademark Office
SJ Summary Judgment
TTAB Trademark Trial and Appeal Board