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When Is Batting “Lofty”? Look to the Specification

In an opinion addressing the definiteness of a term of degree, the US Court of Appeals for the Federal Circuit affirmed a final determination of the US International Trade Commission (ITC), concluding that an asserted claim...more

Consistent Witness Testimony Gives Teeth to Assertion of Public Availability

In an opinion addressing the sufficiency of corroborating evidence regarding public availability of a catalog, the US Court of Appeals for the Federal Circuit concluded that prior art status was established based on...more

Specification Must Enable Full Scope of Claims as Construed

In an opinion addressing enablement under 35 USC 112, the US Court of Appeals for the Federal Circuit concluded that an asserted claim was invalid because the specification failed to enable its full scope, even though...more

Disclosed Structure Restricts Breadth of Means-Plus-Function Limitations

In an opinion addressing claim construction and Patent Trial and Appeal Board (PTAB) jurisdiction, the US Court of Appeals for the Federal Circuit concluded that while the PTAB had the authority to consider the patentability...more

Reconsideration of Institution Decisions Is Also “Final and Nonappealable”

In an opinion addressing whether a decision by the Patent Trial and Appeal Board (PTAB or Board) to reconsider a decision on institution is “final and nonappealable,” the US Court of Appeals for the Federal Circuit reaffirmed...more

Claims Withdrawn Because of Rejection May Limit Claim Scope **WEB ONLY**

In an opinion addressing prosecution history estoppel, the US Court of Appeals for the Federal Circuit affirmed a district court’s decision granting summary judgment of non-infringement, finding that the patentee was estopped...more

When Distinguishing Statements May Be Considered Disclaimers of Claim Scope

Addressing disclaimer of claim scope, the US Court of Appeals for the Federal Circuit affirmed the district court’s summary judgment of non-infringement, finding that the patentee clearly and unmistakably disclaimed...more

You Can’t Spell “Pressurized Collection Vessel” Without “Collection” (Akzo Nobel Coatings, Inc. v. Dow Chem. Co.)

In an opinion addressing claim construction, infringement and indefiniteness, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s findings that the asserted claims were not indefinite and not...more

Joinder Motions Do Not Nullify the One-Year Statutory Bar for Petitions - ZTE Corp. v. Adaptix, Inc.

Addressing whether the concurrent filing of a motion for joinder is sufficient to overcome the one-year statutory bar on inter partes review (IPR) petitions, the Patent Trial and Appeal Board (PTAB or Board) denied a...more

Design Patentees Are Entitled to Infringers’ Unapportioned Total Profits - Nordock, Inc. v. Systems Inc.

In an opinion addressing the proper measure of damages for design patent infringement, the U.S. Court of Appeals for the Federal Circuit vacated and remanded a district court’s order denying a motion for a new trial on...more

Broadest Reasonable Interpretation Persists as Standard for Claim Construction in AIA Proceedings - In re Cuozzo Speed Techs., LLC

In a deeply divided opinion addressing the claim construction standard in post-grant America Invents Act (AIA) proceedings, the U.S. Court of Appeals for the Federal Circuit denied a petition for rehearing en banc, leaving in...more

No Substantial Change in Standard for Indefiniteness Under “Reasonable Certainty” Test - Biosig Instruments, Inc. v. Nautilus,...

In an opinion addressing the standard for indefiniteness in view of the Supreme Court of the United States’ 2014 “reasonable certainty” test, the U.S. Court of Appeals for the Federal Circuit maintained its reversal of the...more

Patent Co-Owners Are Necessary Parties to Infringement Suits, but Cannot Ordinarily Be Involuntarily Joined

STC.UNM v. Intel Corp. - In a divided opinion addressing whether a patent co-owner has a substantive right not to join in an infringement suit, the U.S. Court of Appeals for the Federal Circuit denied a petition for...more

Counsel May Confer with a Witness Between Cross-Examination and Re-Cross, but the Witness Might Be Re-Crossed on the Substance of...

Organik Kimya AS v. Rohm and Haas Co. - In an order regarding allowable communications between counsel and witness, the Patent Trial and Appeal Board (PTAB) held that counsel may confer with a witness between the end...more

Director’s Decision on Inter Partes Review Institution Is the Final Word

St. Jude Med., Cardiology Div., Inc. v. Volcano Corp.; In re Dominion Dealer Solutions, LLC; In re The Procter & Gamble Co. - In three opinions, each addressing a slightly different issue regarding the reviewability of...more

IP Update, Vol. 16, No. 10, October 2013

No Case or Controversy in DJ Against Patentee Who Sued Manufacturer’s Customers: Cisco Systems, Inc. v. Alberta Telecommunications Research Center - In a non-precedential opinion addressing declaratory judgment...more

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