Category Archives: CAFC Opinions

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District Courts Staying Cases Pending CLS Bank, but the Federal Circuit Decides One

In December, the Supreme Court granted certiorari in CLS Bank Int’l v. Alice Corp., No. 13-298, in which the question presented by the petitioner is “[w]hether claims to computer-implemented inventions — including claims to systems and machines, processes, and items of manufacture — are directed to patent-eligible subject matter within the meaning of 35 U.S.C. … Continue reading this entry

Supreme Court to Tackle Plenty of IP Issues in 2014

On January 10, 2014 the Supreme Court granted certiorari in two patent cases, one copyright case, and a fourth case that may have implications for federal trademark law. The Court had already granted certiorari in at least five other IP-related cases set for argument in 2014. Needless to say, it will be a busy year for IP … Continue reading this entry

Mischaracterizing Record of Ex Parte Reexamination May Constitute Inequitable Conduct

In Ohio Willow Wood Co. v. Alps South, LLC, No. 2012-1642 (Nov. 15, 2013) the Federal Circuit reversed a district court’s summary judgment ruling of no inequitable conduct and suggested in its decision that the patentee committed inequitable conduct before the USPTO. In Ohio Willow, the patentee allegedly withheld evidence and misrepresented testimony when appealing … Continue reading this entry

Good Faith Belief of Invalidity May Be Defense to Induced Infringement and Opinion Letters May Become Increasingly Important

The Federal Circuit recently denied a request for rehearing en banc in the matter of Commil USA, LLC v. Cisco Sys., Inc., in a 6-5 vote of the participating judges.  2013 U.S. App. LEXIS 21713 (Fed. Cir. Oct. 25, 2013) (“Commil II”).  The result is that evidence of a good faith belief of invalidity of … Continue reading this entry

The Joinder Provision of the AIA is Not a Substitute for Discretion

The Federal Circuit recently confirmed that district courts must still exercise discretion in deciding motions to sever where the heightened joinder requirements of the AIA are satisfied. In In re Nintendo, Co.¸ __ Fed. App’x __ (Fed. Cir. Sept. 25, 2013) (nonprecedential), UltimatePointer, LLC sued Nintendo and numerous video game retailers in the Eastern District of Texas … Continue reading this entry

Federal Circuit Addresses Design Patent Invalidity Standards

Practitioners working in the area of design patent litigation should take note of the Federal Circuit’s recent decision in High Point Design LLC v. Buyers Direct, Inc., No. 2012-1455 (Sept. 11, 2013), which provides guidance and instructions concerning design patent invalidity that are of the utmost importance to anyone seeking to invalidate or assert a design … Continue reading this entry

Federal Circuit Split Over Inequitable Conduct for Late Payment of Maintenance Fee

In Network Signatures, Inc. v. State Farm Mut. Auto. Ins. Co., No. 2012-1492 (Fed. Cir. Sept. 24, 2013), a divided Federal Circuit panel reversed a district court’s finding of inequitable conduct based on the late payment of a maintenance fee. The majority held that using the standard PTO form without providing an explanation for the late payment could … Continue reading this entry

Federal Circuit Clarifies Double Patenting Safe Harbor Provision

Earlier this month, in St. Jude Medical, Inc. v. Access Closure, Inc., No. 2012-1452 (Sept. 11, 2013) the Federal Circuit clarified the double patenting safe harbor provision in 35 U.S.C. § 121. The safe harbor provision is designed to prevent the inherent unfairness that would occur if claims found to be patentably distinct by the … Continue reading this entry

Be Aware of Invalidating Offers-for-Sale by Manufacturing Partners

UPDATED (Originally Published on Aug 27, 2013) The Federal Circuit’s recent decision in Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc., Appeal No. 2012-1581 illustrates the danger to patent holders of potentially triggering an “on-sale” bar when outsourcing product manufacturing, or even product development, to third-parties that may themselves make invalidating offers for sale. Hamilton … Continue reading this entry

Federal Circuit Determines It Does Not Have Jurisdiction to Address Dispute With Heinz

Under the America Invents Act (“AIA”), the Federal Circuit has jurisdiction over appeals based on a civil action “in which a party has asserted a compulsory counterclaim arising under any Act of Congress relating to patents.” Recently, however, the Federal Circuit made clear that its jurisdiction to hear cases under 28 U.S.C. § 1295, as set … Continue reading this entry

Federal Circuit Decision Highlights Seldom-Used Doctrine of Equivalents Analysis

The Federal Circuit’s August 27, 2013 decision in Applied Medical Resources Corp. v. Tyco Healthcare Group LP (Case No. 2012-1412) (nonprecedential) relied on the seldom-used “difference in kind” test in analyzing infringement under the doctrine of equivalents, considering whether an accused product was different in kind – rather than just degree – from the claimed invention. … Continue reading this entry

Judge Plager (Fed. Cir.) Suggests Construing Ambiguous Claims Against the Patent Holder

On August 6, 2013, the Federal Circuit issued a 48-page opinion in 3M Innovative Props. Co. v. Tredegar Corp., in which it dissected in excruciating detail the construction of patent claims directed to “elastomeric laminates” used in diapers and exercise pants. Reading only Judge Reyna’s majority opinion, one might think that the Court had merely engaged … Continue reading this entry