Jason Sierman

Intellectual Property (34 summaries)

Alcon Research Ltd. V. Barr Laboratories, Inc.

When Barr challenged Alcon's patent, it did not show with clear and convincing evidence that a person of ordinary skill in the art could not practice the claim without undue experimentation, which is required to prove lack of enablement.

Area(s) of Law:
  • Patents
  • , Patent Infringement

Starhome GmbH v. AT&T Mobility LLC

Non-infringement was found when two figures were submitted in a claim and were ambiguous because they didn't rise to the level of clear intent to impart a novel meaning to the claim term.

Area(s) of Law:
  • Patents
  • , Claim Construction

PFIZER INC. v. TEVA PHARMACEUTICALS USA, INC.

Claims are construed under the term’s plain and ordinary meaning as understood by a person or ordinary skill in the art unless: 1) patentee defines and acts as own lexicographer, or 2) patentee disavows the full scope of a claim in specification or prosecution.

Area(s) of Law:
  • Patents
  • , Claim Construction

KILOPASS TECHNOLOGY, INC. v. SIDENSE CORPORATION

The court may award reasonable attorney fees in patent infringement cases with exceptional circumstances; a clear and convincing evidence standard applies to the inquiry of whether fees will be awarded.

Area(s) of Law:
  • Patents
  • , Attorney's fees

AUXILIUM PHARMACEUTICALS, INC v. UPSHER-SMITH LABORATORIES, INC.

The doctrine of equivalents protects patentees from copyists using unforeseeable equivalents that perform the same function in substantially the same way to obtain substantially the same result as a patent claim.

Area(s) of Law:
  • Patents
  • , Equivalents

Ohio Willow Wood Co. v. Alps South, LLC.

Unremarkable secondary indicia of non-obviousness was inadequate to rebut a strong prima facie case of obviousness.

Area(s) of Law:
  • Patents
  • , Obviousness

IBORMEITH IP, LLC v. MERCEDES-BENZ USA, LLC

Patents containing “computational means” limitations require the disclosure of structures with specific steps for performing the claimed functions.

Area(s) of Law:
  • Patents
  • , Definiteness

MICROSOFT CORPORATION v. INTERNATIONAL TRADE COMMISSION

Patent infringement and the existence of a domestic industry relating to the articles protected by the patent must both be shown to establish a violation of section 337 of the Tariff Act of 1930.

Area(s) of Law:
  • Patents
  • , Infringement

ST. JUDE MEDICAL, INC. v. ACCESS CLOSURE, INC.

Consonance was not maintained in divisional applications because it contained two or more separately patentable inventions.

Area(s) of Law:
  • Patents
  • , Safe Harbor

SKINMEDICA, INC. v. HISTOGEN INC.

During claim construction, terms are not always afforded their ordinary meaning. The ordinary meaning of a term can be disclaimed and redefined through repeated and definitive remarks in the patents written description.

Area(s) of Law:
  • Patents
  • , Claim Construction

Smith & Nephew, Inc. v. Synthes (U.S.A.)

New designs borne from combining prior art can only be patented if the new combination is not so obvious as to be a predictable use of prior art elements according to their established functions.

Area(s) of Law:
  • Patents
  • , Obviousness; Prior Art

ULTRAMERCIAL, INC., and Ultramercial, LLC, v. HULU, LLC, and Wildtangent, Inc.

A patent can embrace an abstract idea so long as it meaningfully limits the idea by restricting the patent to a concrete application of the idea.

Area(s) of Law:
  • Patents
  • , Limits on Abstraction

General Electric Co. v. Mitsubishi Heavy Industries, Ltd.

Patent applicants have an “uncompromising” duty of candor and good faith in dealing with the PTO, which includes the duty of disclosing all known material prior art.

Area(s) of Law:
  • Patents
  • , Inequitable Conduct

Bryan C. McIntire v. Sunrise Specialty Co.

A design patent is infringed if “the patented design, or any colorable imitation thereof,” is applied to “any article of manufacture for the purpose of sale.”

Area(s) of Law:
  • Patents
  • , Infringement

Nassau Precision Casting Co., Inc. v. Achushnet Co., Inc. Cobra Golf Co., and Puma N.A., Inc.

Infringement was not proved because golf clubs alleged to be infringing did not meet the specifics of the patent claim language.

Area(s) of Law:
  • Patents
  • , Infringement

Dawson v. Dawson

PATENT; CONCEPTION: Inventor must have formed a definite and permanent idea of the complete and operative invention as it is to be applied in practice.

Area(s) of Law:
  • Patents

Move, Inc. v. Real Estate Alliance, Ltd.

Liability for indirect patent infringement can occur when claim steps are performed by more than one entity, provided the elements for inducement are met.

Area(s) of Law:
  • Patents

Cephalon, Inc. v. Watson Pharmaceuticals, Inc.

Enablement can be found when one skilled in the art can practice the invention without “undue experimentation.”

Area(s) of Law:
  • Patents

Rexnord Industries, LLC v. Kappos

Prior art may anticipate a missing feature that must be necessarily present, or inherent, without explicitly disclosing that feature.

Area(s) of Law:
  • Patents

In re Rosuvastatin Calcium Patent Litigation

An unsuccessful filing of an ANDA is a statutory act of infringement.

Area(s) of Law:
  • Patents

Ritz Camera & Image, LLC v. Sandisk Corporation

Parties that purchase patented goods have standing to assert a Walker Process antitrust claim against the patentee, alleging the patent was obtained by fraud on the PTO.

Area(s) of Law:
  • Patents

Energy Transportation Group, Inc. v. William Demant Holding A/S

Prosecution history estoppel bars the assertion of the doctrine of equivalents when the presumption that a key claim phrase was narrowed to secure the patent in question is not overcome.

Area(s) of Law:
  • Patents

Outside the Box Innovations, LLC v. Travel Caddy, Inc.

To render a patent unenforceable due to inequitable conduct, both the materiality of a nondisclosure or misrepresentation and intent to deceive the USPTO must be proven.

Area(s) of Law:
  • Patents

Ibormeith IP, LLC v. Mercedes-Benz USA, LLC

For “means-plus-function” claims using algorithms, one must disclose it so as to show how its structure, material, or act supports the patent claim.

Area(s) of Law:
  • Patents

ActiveVideo Networks, Inc. v. Verizon Communications, Inc.

A JMOL for patent non-infringement must be supported with substantial evidence. Permanent injunctions on patent infringement cannot be upheld where losses are quantifiable based on lost license fees and damages are not irreparable harm.

Area(s) of Law:
  • Patents

Greenliant Systems, Inc. v. Xicor LLC

A patentee may enlarge the scope of his original claim only if by error he claimed less than he had a right to claim in the original patent.

Area(s) of Law:
  • Patents

In re Beineke

An accidental seedlings discovery is not the product of the human inventive faculty.

Area(s) of Law:
  • Patents

In re Antor Media Corporation

Unclaimed disclosures in patents carry a presumption of enablement.

Area(s) of Law:
  • Patents

General Electric Co. v. ITC

Tariff Act of 1930, § 337, protects domestic industry by prohibiting imports that infringe on U.S. patents.

Area(s) of Law:
  • Patents

Apple, Inc. v. Motorola, Inc.

When plaintiff claiming patent infringement fails to establish any basis for an award of relief, the defendant is entitled to a judgment dismissing the case.

Area(s) of Law:
  • Copyright

In re Hyon

Obviousness is a question of fact that the Court of Appeals reviews for substantial evidence.

Area(s) of Law:
  • Patents

Federal Trade Commission (FTC) v. Watson Pharmaceuticals, Inc.

Reverse payment settlements do not violate antitrust laws in patent cases, because patent holders have been granted a lawful right to exclude for the duration of their patent.

Area(s) of Law:
  • Patents

Advanced Fiber Technologies Trust v. J&L Fiber Services, Inc.

Unclear patent terms can be probative of a lack of willfulness on the part of an alleged patent infringer.

Area(s) of Law:
  • Patents

Mayo Collaborative Services v. Prometheus Laboratories, Inc.

Patents based on natural law must contain other inventive elements to ensure the patent in practice amounts to significantly more than a patent of the natural law itself.

Area(s) of Law:
  • Patents