Current Federal Circuit Law and Issues 

Since the November 30, 2011 posting, the Federal Circuit issued twelve (12) precedential patent law opinions and orders.  The law and issues from these cases – which The IP Law Outline highlights in red to distinguish them from the earlier cases – include: CLAIM CONSTRUCTION (the district court failed to examine adequately the plain language of the claims; the claims and specification generally carry greater weight than the prosecution history; and applying the rule that “clear statements of scope” in the specification, viewed as a whole, are needed to read a preferred embodiment into the claims); PATENT-ELIGIBLE SUBJECT MATTER (claims to “computer-aided” business methods held invalid where the claims were silent as to how and the extent to which a computer aids the method, or the significance of a computer to the performance of the method (Judge Plager, dissenting – would have vacated the district court’s judgment regarding Section 101 and remanded for a determination of validity under the “conditions of patentability” raised by the parties, specifically Section 103, rather than “as a matter of efficient judicial process . . . foray into the jurisprudential morass of §101 unless absolutely necessary”)); ANTICIPATION (the party asserting prior invention under Section 102(g) must prove that it appreciated what it had made, but does not need to know everything about how or why its invention worked, or conceive of its invention using the same words that the patentee uses to claim it; and reversing the denial of JMOL of anticipation where the district court based lack of anticipation on an expert’s extrapolating from his measurements of a drawing in the prior art patent, because for anticipation must look at the entire reference); INDEFINITENESS (applying the well-established rule that a computer-implemented means-plus-function claim requires sufficient disclosure of corresponding structure in the specification of at least a general purpose computer or processor and algorithm for performing the claimed function); ENABLEMENT (affirming JMOL of enablement at the close of evidence in a jury trial where the specification was “equally enabling” for a second, non-preferred species encompassed by a genus claim); WRITTEN DESCRIPTION (affirming summary judgment where the claims and specification, in light of “well-known” prior art, provided adequate written description of both species of a genus claim); JOINT INVENTORSHIP (applying the well-known principle that conception of a compound requires knowledge of both the chemical structure of the compound and an operative method of making it); REEXAMINATION (affirming invalidity based on obviousness of a reexamined patent that was previously held valid by a district court and affirmed by the Federal Circuit, relying on In re Swanson, 9/4/08, as controlling (Judge Newman, dissenting – reexamination of a patent after a prior district court judgment of the patent’s validity and affirmance by the Federal Circuit is improper as unconstitutional for violating separation of powers and principles of claim and issue preclusion));  ATTORNEY AND EXPERT WITNESS FEES AWARDED BASED ON BAD FAITH LITIGATION (affirming the district court’s $4.7 million award based on the patentee’s unreasonable claim construction that ignored the patent and prosecution history, and bad faith in continuing the litigation with baseless infringement claims after the district court’s unfavorable claim construction, as well as the patentee’s litigation misconduct, including misrepresenting the claim construction law since Phillips (en banc) and the district court’s claim construction, and relying on unreliable and inadmissible expert testimony); PRELIMINARY INJUNCTIONS (affirming the grant of a preliminary injunction based on a likelihood of success on nonobviousness (Judge Gajarsa, dissenting – the majority improperly applied a clear and convincing evidence standard to obviousness, as well as a pre-KSR standard for obviousness)); STANDING TO SUE (affirming dismissal for lack of standing where the plaintiff did not own the patents sued on based on an alleged assignment of the invention in a consulting agreement between the inventor and the plaintiff’s predecessor (Judge Bryson, dissenting – the consulting agreement was at least ambiguous as to whether it incorporated an assignment covenant from an earlier employment agreement)); DECLARATORY JUDGMENT JURISDICTION (affirming lack of jurisdiction over invalidity counterclaims with respect to withdrawn or unasserted patent claims); WAIVER ON APPEAL (for failing to make invalidity argument first to the district court, where exceptions to the waiver rule did not apply, including that the law underlying the new argument on appeal was well-established); and WRIT OF MANDAMUS (granting petition for a writ of mandamus and ordering the Delaware district court to transfer case).

In nonprecedential patent law opinions and orders, the law and issues include: CLAIM CONSTRUCTION (broadest reasonable construction by the BPAI/PTO - the rule that claims are not limited to preferred embodiments absent language in the specification affirmatively limiting the claims to such embodiments is “particularly so” during reexamination where claims are given their broadest reasonable construction; the BPAI gave a reasonable construction to a claimed device having a “unitary, one-piece construction” based on an embodiment in the application for making the device; construing claim elements as requiring separate structures; apparatus vs. method claims – apparatus claims are not limited to the process of making the apparatus; and the Federal Circuit does not construe claim terms in the first instance); ANTICIPATION (affirming anticipation of broad claim based on the transition phrase “comprising”); INDEFINITENESS (claims were definite despite multiple ways to measure the disputed claim term, where based on expert testimony one of ordinary skill in the art would know the best way); REEXAMINATION (**vacating and granting en banc review of a prior precedential split decision (Judge Lourie, dissenting) holding that intervening rights applied to disclaiming arguments made during reexamination, without amending the claims; and intervening rights applied where substantive changes were made to the original claims); PRELIMINARY INJUNCTIONS (vacating and remanding preliminary injunction because the district court failed to conduct an evidentiary hearing despite disputed factual issues, and also failed to address the defendant’s invalidity defense, applying Third Circuit law); DISQUALIFICATION OF COUNSEL (declining to order the district court to disqualify counsel where would cause prejudice to the client, delay the proceedings and add expense, and the opposing party showed no material harm based on the disclosure of confidential information); and WRIT OF MANDAMUS (denying mandamus relief with respect to the denial of a motion to transfer venue, and the denial of a motion to stay litigation pending reexamination).

In a precedential trademark law opinion, the law and issues include: DISCOVERY SANCTIONS IN A TTAB PROCEEDING (affirming the TTAB’s sanction in a cancellation proceeding of a default judgment and cancellation of the trademark registrant’s mark for repeated discovery abuses); and a DISTRICT COURT’S INHERENT POWER APPLIED TO AGENCY TRIBUNALS (ruling that the inherent power of courts to prevent abuses of the judicial process applied to the TTAB).