Company that Could Not Prove It was the Successor-In-Interest to the Third Party Requestor of an Inter Partes Reexamination Could Not Bring an Appeal of that Reexamination

Agilent Technologies, Inc. v. Waters Technologies Corporation

This case involves an appeal to the Federal Circuit of the PTO’s decision in an inter partes reexamination.  The third party requesting the inter partes reexamination was Aurora.  During the pendency of the reexamination, Agilent purchased substantially all of the assets of Aurora and agreed to be bound by the outcome of the pending reexamination.  Read more>>

Court Affirms PTO’s Holding that Claims in a Pending Application Are Obvious

In re: Urbanski

The court affirmed the PTO’s finding that claims of a pending patent application are unpatentable due to obviousness over the combination of a reference to Gross in view of another reference to Wong.  The claims at issue related to a method for making an enzymatic hydrolysate of a soy fiber.  Read more>>

Federal Circuit Found Infringement Under the Correct Claim Construction Where the Accused Infringer Failed to Argue that Jury Was Required to Find Non-Infringement Under the Correct Construction

Avid Technology, Inc. v. Harmonic, Inc.

The jury’s verdict of non-infringement in this case turned on the meaning of two claim terms: “independent storage unit” and “in files.”  The Federal Circuit held that the district court erred in construing the term “independent storage unit” based on an alleged prosecution disclaimer. The court held that the alleged disclaimer was insufficiently clear and unmistakable to warrant applying the alleged disclaimer to the construction.  Read more>>

Finding of Exceptional Case Affirmed, But the Award of Double Attorney Fees Was Vacated

Lumen View Technology, Inc. v. Findthebest.com, Inc.

The district court held the patent-in-suit to be patent ineligible under Section 101.  It further found that the case was exceptional under Section 285 because, even under Lumen View’s constructions, there could be no infringement and Lumen View’s motivation for filing suit was to extract a nuisance settlement.  Read more>>

It is Proper for the PTO to Have the Same Panel Institute an IPR and Make the Final Determination of Patentability

Ethicon Endo-Surgery, Inc. v. Covidien LP

Covidien petitioned the PTO for an inter partes review of Ethicon’s patent.  The Patent Trial and Appeals Board (PTAB) instituted the IPR and then, following the trial, held that the claims at issue were invalid as being obvious.  Read more>>

Patent Claims Directed to Anonymous Loan Shopping Are Not Patent Eligible

Mortgage Grader, Inc. v. First Choice Loan Services Inc.

The district court did not err in refusing to strike a Section 101 patent eligibility defense or in granting summary judgment under Section 101 holding patent claims on anonymous loan shopping to be directed to patent ineligible subject matter.  Although First Choice included the Section 101 defense in its affirmative defenses, it did not include this defense in its preliminary invalidity contentions pursuant to the district court’s rules in patent cases.  Read more>>

Patent Office Correctly Refused to Award Patent Term Adjustment Following its Issuance of an Erroneous Office Action

Pfizer, Inc. v. Michelle K. Lee.

This appeal involves the amount of a patent term adjustment awarded to Pfizer.  Pfizer filed the lawsuit seeking to reverse the PTO’s amount of the adjustment and to add back 197 days to the term.  According to 35 U.S.C. §154(b)(i) regarding “A-Delays,” the patentee is entitled to additions to the patent term if the PTO fails to timely provide a notification under Section 132.  Here, the PTO issued a first office action that included a restriction requirement.  Read more>>

Summary Judgment of No Infringement Affirmed Where Patentee’s Expert’s Declaration Was Insufficient to Create a Genuine Issue of Material Fact

Akzo Noble Coatings, Inc. v. Dow Chemical Co.

Akzo appealed the district court’s grant of summary judgment of non-infringement, both literally and under the doctrine of equivalents and Dow cross-appeals the district court’s conclusion that the claims were not indefinite.  On the non-infringement issue, Akzo contends that the court erred in construing the term “pressurized collection vessel” to require accumulation.  Read more>>