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]
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]
| 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 |
