May 2010
Term of Degree “Readily” Not Indefinite If Patent Supplies Standard for Measuring Scope
[Appealed from E.D. Tex., Judge Clark]
Court Affirms Dismissal of a DJ Complaint Based on Absence of an Actual Controversy
[Appealed from D. Del., Judge Robinson]
Court Affirms SJ That Google’s Online Advertising System Did Not Infringe
[Appealed from E.D. Va., Judge Friedman]
Plaintiff University Fails to Provide Clear and Convincing Evidence of Joint Inventorship Where the Parties’ Respective Stories Are “Equally Plausible”
[Appealed from D. Del., Judge Robinson]
Court Affirms Board’s Finding of Adequate Written Description and Reverses Board’s Finding of Failure to Establish Actual Reduction to Practice in an Interference
[Appealed from Board]
Court Affirms Board’s Interference Ruling After Finding Claims Satisfied Written Description Requirement
[Appealed from Board]
Federal Circuit Clarifies That the Rule Against Reissue Recapture Applies to Subject Matter Surrendered During Prosecution of Related Patent Applications
[Appealed from D. Mass., Judge Tauro]
Recordation of Patent Assignment at the PTO Created a Presumption of Validity of the Assignment
[Appealed from ITC]
Claims to a Controller with Multiple Input Members Were Not Supported by Earlier Application That Described a Controller with a Single Input Member
[Appealed from E.D. Tex., Judge Clark]
Confusion Is Likely Between the Marks “ML” and “ML MARK LEES” for Identical Goods
[Appealed from TTAB]
Hatch−Waxman Counterclaim Provision Does Not Permit Generic Manufacturer to Challenge Use Code Applied to Pioneering Manufacturer’s Orange Book Listed Patent
[Appealed from E.D. Mich., Senior Judge Cohn]
[Appealed from Board]
Invention Secrecy Act Provides No Relief to Patent Owners for Government Use of an Invention Subject to a Secrecy Order After Patent Issues
[Appealed from S.D. Cal., Judge Sammartino]
Nonuse of Mark for Nearly Eight Years Does Not Constitute Abandonment Where Owner Produced Substantial Evidence of Intent to Resume Use During That Period
[Appealed from TTAB]
Finding of Noninfringement Affirmed Where Allegedly Subversive Arguments Made at Trial Did Not Subvert the Jury’s Reason or Commitment to Decide the Issues on the Evidence Received and the Law as Given
[Appealed from E.D. Va., Senior Judge Hilton]
Incorporation by Reference Statement Sufficiently Identified the Incorporated Material
[Appealed from Board]
Trade Secret Claim Barred by Statute of Limitations; Inventorship Claim Not Necessarily Barred by Res Judicata
[Appealed from N.D. Tex., Judge McBryde]
Federal Circuit Jurisdiction Requires Resolution of a Patent Law Issue as a Theory of Relief
[Appealed from S.D. Fla., Judge Huck]
Ordinary Skill Cannot Substitute for Disclosure of an Invention’s Novel Aspects to Satisfy the Enablement Requirement
[Appealed from D. Del., Judge Farnan]
Absent Misrepresentation, a Party May Rely on a Favorable JMOL Determination and Jury Verdict as Objective Evidence That Its Infringement Claims Are Not Frivolous
[Appealed from D. Colo., Judge Matsch]
[Appealed from E.D. Tex., Judge Ward]
Arguments Made During Prosecution Trump Ambiguous Disclosure That May Have Otherwise Established an Earlier Priority Date
[Appealed from S.D. Ohio, Judge Beckwith]
| Abbreviations | |
| 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 |
