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

September 2012

Presumption Created by Doctrine of Claim Differentiation Not Overcome in Light of Patent Specification and Expert Testimony

[Appealed from ITC]

In Assessing Statute of Limitations, Earlier Suspicions of Trade Secret Misappropriation Do Not Give Rise to a Constant Future Duty to Investigate

[Appealed from E.D. Tex., Judge Schell]

Trademark Cancelled Because Software Used as a Conduit for Providing Services over the Internet Is Not a Good in Trade

[Appealed from TTAB]

The § 271(e)(1) Safe Harbor Covers Generic Quality Control Batch Testing Even After FDA Approval

[Appealed from D. Mass., Judge Gorton]

Mature Oak Trees Found in Yard Not Entitled to Patent Protection Under
35 U.S.C. § 161

[Appealed from Board]

Withdrawal of Rule 11 Sanctions Against an Attorney Does Not Preclude an Exceptional Case Finding Under 35 U.S.C. § 285

[Appealed from N.D. Tex., Judge Means]

Expert Witnesses Should Analyze the Georgia-Pacific Factors, Not Merely Recite Them

[Appealed from D. Conn., Judge Covello]

The Concentration Range in an Independent Claim Must Include the Concentrations in the Dependent Claims

[Appealed from S.D. Ind., Judge Young]

JMOL Overturned Because Substantial Evidence Supported Jury’s Findings of Nonobviousness

[Appealed from W.D. Tex., Judge Furgeson]

A Mark Is Merely Descriptive If It Conveys Information Regarding a Function, Purpose, or Use of the Goods

[Appealed from TTAB]

Broad Claim Language Must Be Enabled Across Its Full Scope of Coverage

[Appealed from D. Del., Judge Bartle III]

SJ of Infringement of a Patented Method Is Inappropriate Where Plaintiff Offers No Evidence of Actual Use of the Method

[Appealed from N.D. Ill., Judge Shadur]

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Looking Ahead

Claims to Isolated DNA and Screening Method Are Patent Eligible, but Claims to Analyzing and Comparing Methods Are Not

[Appealed from S.D.N.Y., Senior Judge Sweet]

Clear and Convincing Evidence of “Made in This Country” Must Be Presented to Invalidate a Patent Under § 102(g)(2)

[Appealed from ITC]

Representing to PTO That a Product-by-Process Claim Limitation Is Structurally Distinct from the Prior Art Prevents Recapture in Reissue
No. 11-1514 (Fed. Cir.  Aug. 22, 2012)
[Appealed from N.D. Cal., Judge Chen]

Monetary Damages Adequately Compensate Patentee When There Have Been Extensive Licensing Efforts, Solicitation of Infringer over a Long Period of Time, and No Direct Competition with Infringer

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

In the Absence of Supreme Court Consensus, Personal Jurisdiction Premised on a Stream-of-Commerce Theory Is Assessed on a Case-by-Case Basis

[Appealed from D. Wyo., Judge Freudenthal]

A Claimed Intermediate Used in the Synthesis of a Compound Does Not Render a Later Claim Directed to the Compound Invalid for Obviousness-Type Double Patenting

[Appealed from D. Del., Chief Judge Sleet]

Exclusion of Prior Art Is Appropriate If an Explanation of Why the Prior Art Is Invalidating Is Not Provided in Response to an Interrogatory Requesting the Same

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

Prior Art Need Not Provide the Exact Method of Optimization for Variable to Be “Result-Effective”

[Appealed from Board]

Hypothetical Negotiation in Inducement of Infringement Takes Place on Date of First Direct Infringement Traceable to Defendant’s First Instance of Inducement Conduct

[Appealed from E.D. Tex., Judge Ward]

En Banc Court Holds That a Party Can Show Induced Infringement of Method Claim Where Inducer and Induced Party Each Perform Some of the Steps

[Appealed from D. Mass., Judge Zobel]

[Appealed from N.D. Ga., Judge Camp]

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