070417_rule_changes

Anonymous (anonymous@undisclosed.example.com) — 2022-10-31T14:20:09+00:00

Changes to Rules issued April 16, 2007, effective April 16, 2007 ederal Register Notice

§ 1.1 Addresses for non-trademark correspondence with the United States Patent and Trademark Office.

claim_construction

Anonymous (anonymous@undisclosed.example.com) — 2026-03-02T14:54:25+00:00

Claim Construction CAFC: "single" biomolecule means "that biomolecule alone In [Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.], the Federal circuit held that “for identifying a single biomolecule” properly required an apparatus to have the capability to characterize (determine the identity of) a biomolecule by examining that biomolecule alone, with no copies created to form an ensemble for examination.

contributory_infringement

Anonymous (anonymous@undisclosed.example.com) — 2025-09-22T21:27:51+00:00

Contributory/Joint Infringement Proving subjective intent for willful/induced infringement (posted 04/18/22) “A defendant is liable for 'induced infringement under § 271(b)' if the defendant took certain affirmative acts to bring about the commission by others of acts of infringement and had 'knowledge that the induced acts constitute patent infringement.'(c)(c)§271(c)

copyright

Anonymous (anonymous@undisclosed.example.com) — 2022-10-31T14:20:09+00:00

Copyrights Full 9th Circuit reverses inverse ratio rule in Copyright law (posted 03/09/20) This is such an important decision for musicians that I decided to include it here, despite not being patent-related. Ruling en banc, the full 9th circuit, in

damages

Anonymous (anonymous@undisclosed.example.com) — 2024-01-01T20:44:20+00:00

Determining Damages Damages expert falsely identifies asserted patents as key; new trial ordered. (posted 03/08/22) In [Apple v. Wi-LAN], the Federal Circuit held that the lower court abused its discretion by denying Apple's motion for a new trial because plaintiff's damages expert testimony by Mr. Kennedy, was flawed. The expert stated that the '145 and '757 patents asserted in this trial were

defenses

Anonymous (anonymous@undisclosed.example.com) — 2025-01-23T15:12:51+00:00

Infringement Defenses Assignor Estoppel Doctrine still with us (updated 06/30/21) Assignor Estppel is “an ecquitable doctrine that prevents one who has assigned the rights to a patent (or patent application) from later contending that what was assigned is a nullity.

disputes

Anonymous (anonymous@undisclosed.example.com) — 2025-09-29T01:37:25+00:00

Inventorship Disputes (Interferences and Derivations) CAFC clarifies amendments impacting interference proceeding In [Speck v. Bates], the Federal Circuit clarified a long-standing exception to section 135(b)(1), wherein an applicant can file its claim after the critical period but 'had already been claiming substantially the same invention as the patentee' during the critical period, are not time-barred. The underlying issue is . . . whether amendments to the Bates '591 application after the…

doctrine_of_claim_differentiation

Anonymous (anonymous@undisclosed.example.com) — 2024-01-05T21:20:35+00:00

Doctrine of Claim Differentiation The Doctrine of Claim Differentiation states that, if necessary to provide claims of differing scope, an ambiguous claim should be interpreted broadly if it is narrowed by a dependent claim, or another claim is present having the same scope plus an additional limitation.

doe

Anonymous (anonymous@undisclosed.example.com) — 2025-01-21T05:23:01+00:00

Doctrine of Equivalents The doctrine of equivalents allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention.

fee_shifting

Anonymous (anonymous@undisclosed.example.com) — 2022-10-31T14:20:09+00:00

Fee Shifting Federal Circuit denies expert witness fees to USPTO (posted 08/19/21) In Hyatt v. Hirshfeld, the Federal Circuit extended the decision in Peter v. NantKwest , which held that 35 U.S.C. § 145 is not sufficiently explicit in terms of Congress' intent to overcome the American Rule

functional_limitations

Anonymous (anonymous@undisclosed.example.com) — 2025-09-22T21:27:08+00:00

Claim Construction: Functional Limitations Fed. Cir. on 112(f): "processor," "storage" are structure (posted 03/28/22) Claim 1. An apparatus comprising: a storage adapted to: store one or more image frames; and a processor adapted to: obtain a first image. . . ;

infringement

Anonymous (anonymous@undisclosed.example.com) — 2025-08-03T17:32:28+00:00

Infringement PTAB requires corroboration of evidence of conception date (01/07/21) In IPR decision in [Apple Inc. et al. v. Yu et al.], the PTAB rejected Yu's contention that their conception predated an invalidating prior art reference because the proof of conception was not corroborated. Specifically, the Weldy reference was published August 12, 1998, which is several months prior to the filing date of the at-issue patent, January 15, 1999. The patent owners' evidence that they conceived o…

injunctive_relief

Anonymous (anonymous@undisclosed.example.com) — 2022-10-31T14:20:10+00:00

Injunctive Relief TiVo wins injunction against EchoStar, injunction stayed by CAFC (08/18/06) After TiVo won an injunction against Echostar in the Eastern District of Texas (TiVo v. EchoStar (E.D.Tex. 2006)), the CAFC stayed the injunction. The injunction was granted because they

international

Anonymous (anonymous@undisclosed.example.com) — 2024-01-01T21:06:16+00:00

International Patents Unified Patent Court releases implementation roadmap (posted 10/17/22) A recently published UPC implementation roadmap Indicates the UPC will start receiving cases on April 1, 2023. A three-month “sunrise” period, currently scheduled to begin on January 1, 2023, will allow users to access the Case Management System which will allow users to register as representatives and opt-out their patents.

inventorship

Anonymous (anonymous@undisclosed.example.com) — 2024-01-01T21:03:40+00:00

Inventorship "Inventor" limited to natural persons (posted 10/02/22) On Aug. 5, 2022, the Fed. Cir., in [Thaler v. Vidal], affirmed the PTO's holding that the Patent Act defines “inventor” as human beings. Because the Patent Act expressly provides that inventors are

ipr

Anonymous (anonymous@undisclosed.example.com) — 2025-09-29T01:49:42+00:00

Inter Partes Review CAFC: No prejudice = no harm by Director's Review In [Pfizer Inc. v. Sanofi Pasteur Inc.], the Federal Circuit rejected Pfizer’s APA challenge to the PTO’s Director Review procedures for lack of prejudice. Specifically, the court held that a failure to abide by notice-and-comment rulemaking in promulgating Director Review procedures is

itc_and_importation_restrictions

Anonymous (anonymous@undisclosed.example.com) — 2022-10-31T14:20:10+00:00

ITC Fed. Cir.: ITC can hear inducement claims (posted 08/11/15) 19 U.S. § 1337 (Section 337 of the Tariff Act of 1930) - Unfair practices in import trade (a) Unlawful activities; covered industries; definitions (1) Subject to paragraph (2) [requiring that an industry related to the patented articles exists or is in the process of being established], the following are unlawful, and when found by the Commission to exist shall be dealt with, in addition to any other provision of law, as pr…

mckesson_timeline

Anonymous (anonymous@undisclosed.example.com) — 2025-08-03T17:32:23+00:00

Timeline of prosecution in McKesson Information Solutions v. Bridge Medical McKesson blurb TIMELINE 1st Patent 2nd Patent 3rd Patent Patent Number 4,857,716 4,850,009 4,835,372 Appl Number 07/205,527 06/862,149 07/078,195 (CIP of the '278 Ap.) Subj Matter

means-plus-function

Anonymous (anonymous@undisclosed.example.com) — 2025-09-22T21:27:37+00:00

Means plus function limitations Fed. Cir.: "Code"/"application" are not "nonce" terms (posted 05/18/22) March 24, 2020: In [Dyfan, LLC v. Target Corp.], the Federal circuit reversed a Markman holding by W.D.Texas (J. Albright) that certain claim terms formulated as “said code, when executed, further configured to . . .(c)

obviousness

Anonymous (anonymous@undisclosed.example.com) — 2026-03-30T20:46:47+00:00

Obviousness: Purdue In the 1990s Purdue Pharma developed an extended release formulation of Oxycodone, the active ingredient of OxyContin. In the 2000s, the FDA had become increasingly concerned about toxicity when taken in large quantities. In 2010, Purdue reformulated OxyContin, which the FDA approved.

preliminary_injunctions

Anonymous (anonymous@undisclosed.example.com) — 2022-10-31T14:20:10+00:00

Preliminary Injunctions Slam-dunk obviousness trumps status quo (02/20/08) In Erico v. Vutec et al., the Fed. Cir. held that the district court abused its discretion in granting a preliminary injunction against defendants. The Fed. Cir. laid out what appears to be a slam-dunk case of obviousness, showing lack of likelihood of success on the part of plaintiff in overcoming a validity challenge. J. Newman issued another trademark cogent and strident dissent, stating,

prior_art

Anonymous (anonymous@undisclosed.example.com) — 2025-09-28T20:45:20+00:00

What Is Prior Art? "Printed publication" requires accessibility by reasonable diligence In a 2024 decision, the CAFC, in [Weber v. Provisur Tech.] reversed the PTAB's holding, finding instead that, under the printed publication requirement of 35 U.S.C. § 102, Weber's manuals were

reissues_reexams_and_certificates_of_correction

Anonymous (anonymous@undisclosed.example.com) — 2022-10-31T14:20:10+00:00

Reissues and Reexams EPRs may be denied based on abusive filings of IPRs (posted 10/29/21) In [In re: Vivint, Inc.], the Federal Circuit held that the Patent Office can deny 35 U.S.C. § 325(d), held that the PTO, “when applying § 325(d), cannot deny institution of [an] IPR basaed on abusive filing practices [and] then grant a nearly identical reexamination request that is even more abusive.(c)

start

Anonymous (anonymous@undisclosed.example.com) — 2026-05-17T18:31:42+00:00

Index Patents EligibilitystartAbstract Ideas:Analysis & CommentaryPatent Examiner GuidelinesCaselaw examplesPTAB Precedential OpinionsBilski lineExternal Resources:BitLawInventorshipDisputes Claim constructionFunctional Limitations, generallyDoctrine of Claim DifferentiationMeans-plus-function Doctrine of EquivalencePrinted Matter DoctrineValidity and Enforceability§ 102 - AnticipationWhat is prior artIncorporation by referenceInherency ObviousnessAnalogous ArtDesign Patents Comprehensive KSR-…

supreme_court

Anonymous (anonymous@undisclosed.example.com) — 2024-01-01T20:28:31+00:00

Supreme Court Upcoming S.Ct. patent cases of interest (posted 01/04/22) Law360 published an article ([cached - private]) identifying cases that might be taken up by the Supreme Court in 2022: Eligibility:American Axle v. NeapcoTrackUpdate: Petition denied 6/30/22Kessler Doctrine/patent exceptionalism:

validity

Anonymous (anonymous@undisclosed.example.com) — 2025-09-28T22:00:30+00:00

Validity and Enforceability of Patents Patents invalidated by Obviousness-Type Double Patenting (posted 01/23/24) Aug. 28, 2023: In [In re Cellect], the Federal Circuit upheld a decision by PTAB to invalidate a set of patents owned by Cellect as invalid under obviousness-type double patenting (ODP). During prosecution, the Examiner never applied an obviousness-type double patenting rejection, and as a result, the patentee never filed terminal disclaimers in the challenged continuation-in-p…

willfulness

Anonymous (anonymous@undisclosed.example.com) — 2023-04-25T16:34:29+00:00

Willfulness An unremarkable Fed. Cir. Decision (09/09/07) In Mitutoyo Corp. et al. v. Central Purchasing, Central Purchasing appeals the district court ruling that Central Purchasing infringed U.S. Patent 4,743,902 in contravention of a 1994 settlement agreement between the parties. On the issue of enhanced damages, the Fed. Cir. reversed the trial court's dismissal, on procedural grounds, of Mitutoyo's claim for enhanced damages due to willful infringement by Central Purchasing. Specifica…

PatentBlurb - legal

070417_rule_changes

claim_construction

contributory_infringement

copyright

damages

defenses

disputes

doctrine_of_claim_differentiation

doe

fee_shifting

functional_limitations

infringement

injunctive_relief

international

inventorship

ipr

itc_and_importation_restrictions

mckesson_timeline

means-plus-function

obviousness

preliminary_injunctions

prior_art

reissues_reexams_and_certificates_of_correction

start

supreme_court

validity

willfulness