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 of their invention prior to the Weldy publication is based on a final draft of their application that was faxed to one of the inventors on August 8. Citing Apator Miitors ApS1), the panel held that “when a party seeks to prove conception through an inventor's testimony, the party must proffer corroborating evidence 'in addition to [the inventor's] own statements and documents.'” The panel also held that the patent owners failed to provide sufficient corroborating evidence that the regarding reasonable diligence in reducing the invention to practice between the alleged date of conception andt he filing of the application that resulted in the patent at issue.

Fed. Cir. finds ensnarement defense defensible (posted 10/02/17)

In Jang v. Boston Scientific, the Federal Circuit upheld the lower-court's ruling that Boston Scientific does not need to pay royalties for a patent held by David Jang because, although the jury found the stent was covered by Jang's patent under the Doctrine of Equivalence, the lower court correctly held in a post-trial hearing that Jang's infringement theory covered (“ensnared”) three earlier prior art patents. Furthermore, the Federal Circuit agreed with the district court's holding that Jang failed to craft an appropriate hypothetical claim for the Doctrine of Equivalence interpretation, and that the court is not obligate to devise one on his behalf. As a result, because the Boston Scientific stent did not literally infringe Jang's patent, there was no obligation by Boston Scientific to pay royalties to Jang.

Supreme Court construes statutory limits on international inducement (posted 02/22/17)

35 U.S.C. § 271(f)(1): Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

In Life Technologies Corp. et al. v. Promega Corp. et al., the Supreme Court held that 35 U.S.C. § 271(f)(1) “has a quantitative, not a qualitative meaning” and that sending overseas a single component for incorporation into other components for manufacture of the patented invention can never constitute a “substantial portion” and thus trigger infringement liability.

And the winner is.... (06/16/07)

The IPO is reporting that the central district of California had the most patent suits initiated in 2006 with 289 cases, followed closely by the eastern district of Texas with 262 and then the northern district of California with a 174.

Interesting jury instructions (06/13/07)

A note by Patently-O on a reflection of Dystar and other recent Fed. Cir. cases in the jury instructions given in Forgent v. EchoStar in Texas.

Hey Abbott!! You can't patent that AGAIN! (11/15/06)

In Abbott Laboratories v. Baxter Pharma. Products, Inc., the Fed. Cir. found that Abbott's patent was anticipated by an earlier Abbott patent, which disclosed the product and method of the patent in suit as an intermediary product/step. The fact that the advantageous properties of the intermediary product is not relevant in determining whether the product or the process (directed to the same purpose of providing an inhaler) was anticipated.

Medtronic loses on recapture argument (10/16/06)

During proseuction, Guidant amended some claims which were later broadened in a reissue application that was eventually granted. Medtronic claimed that, in the reissue, Guidant improperly recaptured subject matter which was surrendered during prosecution. The Fed. Cir. disagreed in Medtronic, Inc. v. Guidant Corporation, et al., a non-precedential opinion.

Interesting NY Times Statistics (09/25/06)

Sunday's New York Times had an interesting article about the Eastern District of Texas entitled “ So Small a Town, So Many Patent Suits.” The accompanying graphic (no longer available on-line) compares popular infringement suit venues in terms of the number of filings, the time to trial, and the percentage patentee victories.

Microsoft Misbehaves

The Seatle Times reported that, in a patent infringement suit filed by Z4 technologies against Microsoft and Autodesk, U.S. District Judge Leonard Davis, citing several instances of litigation misconduct, upped a jury's award of $115 against Microsoft by $25 million, plus nearly $2 million in legal costs.

ACell wins against Purdue (08/18/06)

After “losing” at trial (the trial court found ACell infringed Appellees' patent, but awarded no damages because the patent holders failed to assert a reasonable royalty and did not submit sufficient evidence at trial of lost profits, which was asserted) the CAFC, in a complex opinion in Cook Biotech Inc., and Purdue Research Foundation v. ACell Inc., The CAFC:

  1. Agreed with accused infringer ACell that the term “urinary bladder submucosa” should be given the special definition (and not the generally accepted definition) provided in the specification, which states that it is a composition that “typically” consists essentially of urinary bladder submucosa, but excludes abluminal muscle cell layers and at least the luminal portion of the tunica mucosa. The court found that, “while the composition clearly includes urinary bladder submucosa . . . it cannot include that which was expressly excluded in the patentees' definition (despite the use of the term, “typically” in the definition).
  2. Agreed with the accused infringer ACell that the term, “luminal portion of the tunica mucosa” should be given the special definition (and not the generally accepted definition set forth in a related patent which was incorporated by reference) despite the presence of a less precise definition in the patent at issue.
  3. Found that, as a matter of law, based on the new claim interpretation, there was no literal infringement.
  4. Agreed with ACell that the “all claims rule” bars the capture, under the doctrine of equivalents, of elements specifically excluded by a claim limitation, and therefore, Appellees should not be granted a new trial on the question of literal infringement based on the theory that compositions that include lamina propria and submucosa are equivalent to compositions that consist essentially of submucosa because the two compositions perform the same function, in the same way, to achieve the same result. The court found that applying the appellees' theory of equivalence with respect to the asserted claims would violate a corollary to the 'all limitations rule, that the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims. (citations omitted here [page 23].
  5. Affirmed the trial court's ruling that Dr. Stephen F. Badylack is not an inventor of 6,576,265, in part, because he disavowed any role in the conception of the invention claimed in '265 in his testimony and in a letter he sent to PTO.
F.3d 1293 (Fed Cir. 2018)

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