THE OUTLINE & ANALYSIS just keeps
getting better!
Since the January
10 posting, the Federal Circuit issued four
(4) PRECEDENTIAL opinions and three
(3) NONPRECEDENTIAL
opinions (excluding Rule 36 affirmances), the issues
from all of which have been incorporated (in red)
into THE OUTLINE & ANALYSIS (“TO”)
– which with a high speed internet connection takes only a brief moment to
open!
Now with over
1,500 pages, THE OUTLINE & ANALYSIS is PACKED with new
entries (in red), and is PRIMED for comparison
of the present issues and law with the changes and developments in patent law
ahead in 2010 at the Federal Circuit -- and the U.S. Supreme Court.
Additionally,
several of the “MAIN LINKS” pages
have been revised and refined to reflect the site’s new format below.
The Table of
Cases also has been updated – listing the precedential
cases (and patent-related Supreme Court cases) in reverse chronological order
by year, month and day.
The highlights
from the PRECEDENTIAL
cases include:
1) claim construction (the majority
disagreeing with the district court, and Judge Dyk,
dissenting, as to the scope or extent of a prosecution
disclaimer – here, the disclaimer obviously was not clear and unmistakable, as required, in view of the panel’s split
on this very issue) [See TO:507-527];
2) the claims of a prior art patent are part of
its disclosure for purposes of anticipation and obviousness (applying the
claim construction principle (from Phillips)
that an independent claim is presumed not to include a limitation added in a
dependent claim, for interpreting independent claims in a prior art application
and patent as disclosing subject matter recited in the challenged claims; Judge
Linn dissented, because the structures in the challenged claims were not
recited in the prior art claims, must instead were disclosed only in the
descriptive portions of the specifications) [See TO:877-878, 967-968];
3) anticipation (ruling that a jury instruction
on anticipation was incorrect, which made sufficient for purposes of
anticipation a prior art disclosure of the claim elements that “could have been
arranged” in the way recited in the claim, thus violating the rule that
anticipation requires the presence in a single prior art reference, either
expressly or inherently, of all elements of the claimed invention arranged or combined as in the claim [See TO:902-910], and applying the rule that whether a prior art reference “teaches away” from
the claimed invention is inapplicable to
anticipation [See
TO:957-958]);
4) obviousness and secondary considerations (rejecting the patentee’s contention of
entitlement to a presumption of a nexus
where the commercial success of the
patentee’s product embodying the claimed invention also was due to a second
(prior art) patent [See
TO:1027-1035], and also rejecting evidence of a
long-felt but unsolved need, where
the claims were not limited to preventing the prior art problem [See TO:1027-1032 and
1038]);
5) obviousness-type double patenting
(ruling that a terminal disclaimer
for overcoming double patenting must be filed before the reference patent expires [See TO:1149-1150],
and that the Section 121 safe-harbor
provision for divisional applications also protects a divisional of a
divisional, as long as the consonance requirement is met; Judge Dyk dissented, which the majority appeared to have rebutted
in footnote 4 [See
TO:1150-1152]);
6) inequitable conduct (“one of those rare
cases” in which a finding of inequitable conduct was appropriate, based on the
critical nature of the patentee’s representations to the PTO in obtaining
allowance, while failing to disclose
contradictory statements made to the EPO in connection with the EP
equivalent of the patentee’s prior art U.S. patent; Judge Linn dissented based
on what he believed was a reasonable alternative favorable interpretation of
the patentee’s statements to the EPO) [See TO:1152-1159, 1162-1173, and 1183-1210];
7) relying on dicta
from a prior Federal Circuit opinion (stating that “[e]ven
though we may not be bound by this language in Lonardo, it is instructive and
our holding is consistent with it”) [See TO:203]; and
8) granting a new
trial based on erroneous jury
instructions (declining to grant a new trial where there was no prejudicial
effect to the jury’s verdict of “anticipation or obviousness” based on a
legally erroneous instruction on anticipation, since the Federal Circuit held
that the claims were obvious as a matter of law) [See TO:220-229, 329-332, and 349-351].
The highlights
from the NONPRECEDENTIAL
cases include:
1) claim construction (ruling that method
claims directed to less than the full invention were still limited to the invention
described in the specification, stating that “merely omitting a step in a
described process does not perforce expand the scope of the claim to encompass
the use of devices that are nothing like those described in the specification
as integral to the invention”) [See TO:445-446];
2) compliance with the default and termination
provisions of a license agreement (affirming the district court’s order
denying the licensor’s motion to enforce termination of a patent license
agreement for underpayment of royalties, where the licensor failed to comply
with the termination provisions of the agreement – and even the dissenting
Judge Bryson seemed to agree that the licensor’s efforts (in correspondence
with the licensee) to terminate the agreement -- although Judge Bryson believed
them to be sufficient -- could have been clearer, or at least more “elegant”) [See TO:1525-1528];
and
3) trademark opposition based on a likelihood of confusion, applying the DuPont factors,
and counterclaim for cancellation of
a registration based on false
association (affirming the TTAB’s refusal of
registration based on a likelihood of confusion, applying the purchaser
sophistication, channels of trade, and actual confusion factors [See TO:1427-1437],
despite harmless error [See TO:204-206],
and summary judgment against the counterclaimant for failing to establish that
the challenged “SC” mark was “unmistakably associated” with the state of South
Carolina [See
TO:1448-1452]).
Finally, as
stated above, ALL OF THE CURRENT CASES AND ISSUES
have been incorporated into THE OUTLINE & ANALYSIS.
Thus, if an issue from one of the current cases is not highlighted
above, just consult the Table of Contents (pages 1-24 -- and please feel free
to print if more efficient), pick your issue, and enter the page number into
the page selection feature of Adobe Acrobat or Reader – and you’ll see the
current case and issue (in red) among all the
other current and prior related cases.