THE OUTLINE & ANALYSIS just keeps getting better!

 

Since the February 2 posting, three (3) PRECEDENTIAL opinions and seven (7) NONPRECEDENTIAL opinions and orders (not including Rule 36 affirmances) were added to the Federal Circuit’s “Opinions & Orders” webpage, the issues from all of which have been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!

 

Additionally, in case you didn’t get a chance to review the February 2 posting, the “TO” page numbers cited in the posting have been revised to correspond with THE OUTLINE & ANALYSIS.   

 

The highlights from the PRECEDENTIAL opinions include:

 

1) claim construction ((1) affirming the district court’s construction, ruling that there was no prosecution disclaimer when the prosecution history was read in context [See TO:518-520], which context included that the district court’s construction accounted for the only embodiment disclosed in the specification [See TO:481-485]; and (2) splitting on construction of the disputed claim -- for the 27th time in precedential opinions since Phillips (en banc) -- and the resulting obviousness determination [See TO:392, 959]);

 

2) “specific intent” requirement for inducing infringement (ruling that knowledge of the patent-in-suit for inducement can be shown by the accused infringer’s “deliberate indifference” to the existence of the patent, relying on Supreme Court, D.C. and Seventh Circuit decisions for the proposition that “’specific intent’ in the civil context is not so narrow as to allow an accused wrongdoer to actively disregard a known risk that an element of the offense exists.”) [See TO:632-633, 638-647];

 

3) willful infringement (the district court properly vacated the jury’s pre-Seagate verdict of willful infringement where the jury was not required under the Seagate standard to find willful infringement by clear and convincing evidence) [See TO:747-753];

 

4) reasonable royalty damages (vacating a damages award that was based on royalties received by the patentee from other licenses (i.e., the first Georgia-Pacific factor), because most of the licenses had no relation to the claimed invention; Judge Newman dissented) [See TO:764-770, 787-795];

 

5) first sale doctrine (ruling that the first sale doctrine did not apply retroactively against an unauthorized sale of the accused product by the plaintiff who subsequently acquired rights to the patent-in-suit; Judge Mayer dissented) [See TO:667-672];

 

6) written description (reversing the district court’s finding of inadequate written description for claims added after the filing date because other description in the specification did not limit the invention to the embodiment shown in the figures; Judge Mayer dissented) [See TO:1095-1099];

 

7) patent law expert who is also a technical expert (ruling that a patent law expert had relevant technical experience and education under FRE 702 also to testify as a technical expert, distinguishing Sundance, 12/24/08) [See TO:1338-1347]; and

 

8) “just compensation” under the Invention Secrecy Act – for pre-issuance use by the federal government of an invention, the application for which is subject to a secrecy order under 35 USC §§ 181-184 (ruling that the patentee had standing to assert a claim for just compensation under the Act where the patentee’s application, although the claims were amended, issued as the patent-in-suit) [See TO:1388-1391].

 

The highlights from the NONPRECEDENTIAL opinions and orders include:

 

1) claim construction (noting that the district court erred (albeit harmlessly due to the Federal Circuit’s obviousness ruling) by submitting claim construction to the jury! – which for some undisclosed reason related only to infringement) [See TO:273-276];

 

2) admissibility of new evidence in a Section 145 proceeding (vacating the court’s precedential opinion in Hyatt, 8/11/09, and granting a petition for rehearing en banc, for which the parties were requested to brief issues relating to whether there are any limitations on the admissibility of new evidence in a section 145 proceeding) [See TO:136-139, 1477-1478];

 

3) scope of review of a BPAI decision (under the Chenery (S.C.) doctrine, the court limited its reversal of the BPAI’s unpatentability decision to the grounds employed by the BPAI, on the record before it, for affirming the examiner’s rejections) [See TO:136-144];

 

4) appealable order under 28 USC § 1292 (ruling that the district court’s order imposing an affirmative obligation on the accused infringer was an express injunction, which was immediately appealable even though the enjoined party had volunteered to halt the allegedly infringing uses, since the order prevented the enjoined party from changing its mind before trial) [See TO:49-50];

 

 5) appeal to the Federal Circuit by a nonparty (ruling that it lacked jurisdiction over a nonparty’s appeal of a discovery order denying its motion to quash, stating that nonparties “may secure review of a discovery order by refusing to comply with it and appealing a consequent contempt order” – Connaught Labs) [See TO:79-81]; and

 

6) attorney disqualification (applying the Georgia Rules of Professional Conduct, disqualifying appellate counsel where their partner was an expert witness for the opposing party regarding the amount of attorney fees, and their client had not waived the conflict) [See TO:207-210].

 

Finally, as always, 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.

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.