Willamette Law Online

(20 summaries)

Jeff Marlink

Intellectual Property

TitleExcerptFilling Date
Digital-Vending Services International, LLC v. The University of Phoenix, Inc.Patents: “The context in which a term is used in the asserted claim can be highly instructive” to its claim construction. A limitation should not be read into a claim “based on statements made during prosecution absent a clear disavowal or contrary definition.”(03-07-2012)
In re Erik P. Staats and Robin D. LashPatents: The two-year limitation of 35 U.S.C. § 251 relating to broadening of claims on reissue application only applies to the first broadening reissue application; any further broadening reissue applications, whether or not related to the first broadening reissue application, may be filed outside of the two-year limit.(03-05-2012)
Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.Patents: Long contested patent with application filed on October 24, 1974 and patent finally granted on August 20, 2002. The challenge involves issues of inventorship, anticipation, obviousness, lack of written description and of willful infringement, enhanced damages, attorneys’ fees and costs, and an ongoing royalty.(02-10-2012)
Astrazeneca Pharmacuticals LP v. Apotex Corp.Patents: Charging a §271(e)(2) patent infringement claim confers subject matter jurisdiction upon federal courts. In order to state a claim under §271(e)(2) for pharmaceutical use, the Abbreviated New Drug Application of the defendant must claim a use that was already patented.(02-09-2012)
Mettler-Toledo, Inc. v. B-Tek Scales, LLCPatents: In determining the construction of a means-plus function claim “[a] court must look to the specification to determine the structures that correspond to the claimed function."(02-08-2012)
Adair, Athwal, and Emtage v. Carter and PrestaPatents: "To overcome a [35 U.S.C.] § 135(b)(1) bar for a post-critical date claim, an applicant must show that such claim is not materially different from a pre-critical date claim present in the application… to obtain the benefit of the earlier filing date.”(02-07-2012)
Dealertrack, Inc. v. HuberPatents: "Disclosure of multiple examples [of embodiments] does not necessarily mean that such list is exhaustive." "Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible."(01-20-2012)
Michael S. Powell v. The Home Depot U.S.A., Inc.Patents: “A willful infringement determination requires” that “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement” and if that is met that the “objectively-defined risk was either known or so obvious that it should have been known to the accused infringer”(11-14-2011)
Atlantic Research Marketing Systems, Inc. v. Stephen P. Troy Jr. and Troy Industries, Inc.Patents: A patent must contain “a written description of the invention, and of the manner and process of making and using it, in such full clear, concise, and exact terms as to enable any person skilled in the art … to make and use the same” and it must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”(10-06-2011)
IGT v. Bally Gaming International, Inc., Bally Technologies, inc., and Bally Gaming, Inc.Patents: The rules of claim construction include: 1. “The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history,” unless the patentee “clearly set[s] forth a definition of the disputed claim term other than its plain and ordinary meaning;” 2. The “claim language must be construed in the context of the claim in which it appears;” and 3. “A claim is only indefinite if it is not amenable to construction or is insolubly ambiguous.”(10-06-2011)
In Re Stepan CompanyPatents: A rejection by the Board of Patent Appeals and Interferences based on new grounds not considered by the examiner cannot be the final judicial ruling.(10-05-2011)
John Mezzalingua Associate, Inc. v. International Trade CommissionPatents: The domestic industry requirement of section 337 of 19 U.S.C. § 1337 can be fulfilled in any one of three ways: 1. significant investment in plant and equipment; 2. significant employment of labor or capital; or 3. substantial investment in its exploitation, including engineering, research and development, or licensing.(10-04-2011)
Bettcher Industries, Inc. v. Bunzl USA, Inc., and Bunzl Processor Distribution, LLCPatents: Estoppel under 35 U.S.C. § 315 only applies after all appeal rights have been exhausted; inherency argument of infringement is only applicable where prior art necessarily functions as the challenged patent.(10-03-2011)
Ultramercial, LLC and Ultramercial, Inc. v. Hulu, LLC and WildTangent, Inc.Patents: With the exceptions of laws of nature, physical phenomena, and abstract ideas, the court should determine patentability of subject matter based on 35 U.S.C. §§ 102, 103, and 112 rather than 35 U.S.C. § 101; The application of an abstract idea may be patentable subject matter.(09-15-2011)
Star Scientific, Inc. v. R.J. Reynolds Tobacco Company (a North Carolina Corporation) and R.J. Reynolds Tobacco Company (a New Jersey Corporation)Patents: When claiming priority of a provisional application, the disclosure of best mode required is the best mode contemplated at the time of the provisional application; “a construed claim can be indefinite if the construction remains insolubly ambiguous, meaning it fails to provide sufficient clarity about the bounds of the claim to one skilled in the art,” but may be definite if “discerning the meaning is a formidable task and the conclusion may be one over which reasonable persons will disagree.”(08-26-2011)
Unigene Laboratories, Inc. and Upsher-Smith Laboratories, Inc. v. Apotex, Inc. and Apotex Corp.Patents: Obviousness requires the showing that a person of ordinary skill at the time of the invention would have selected and combined prior art elements in the normal course of research and development to yield the claimed invention.(08-25-2011)
Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.Patents: To determine whether an interference is required between two patents under 35 U.S.C. § 291 the court should apply a “two-way test” requiring that each patent, if prior art, would anticipate or render obvious the other patent.(08-23-2011)
August Technology Corporation and Rudolph Technologies, Inc. v. Camtek, Ltd.Patents: In determining the claim construction of a term within a patent the court will consider a ambiguous term to be defined by language within the claim or preamble and will note distinctions within the language of the claim; in order to have an on sale bar the invention must have been conceived at the time of the offer for sale.(08-22-2011)
In re NTP, Inc.Patents: Upon reexamination claims are to be given their broadest reasonable interpretation consistent with the specification in light of the specification as it would be interpreted by one of ordinary skill in the art; a printed publication qualifies as prior art if one of ordinary skill in the art would have located the source after a reasonable search; uncorroborated testimony cannot be relied upon to establish a prior reduction-to-practice or conception date.(08-01-2011)
In re NTP, Inc.Patents: A patent cannot claim the priority date of a previous application if the patent introduces new subject matter; as of 2002, during reexamination an examiner can consider any “substantial new question of patentability” and there is no longer a presumption of full consideration of cited sources during initial examination.(08-01-2011)