By Thomas F. Zuber and Sarah S. Brooks of Zuber & Taillieu
The Federal Circuit recently clarified several aspects of § 1920’s allowances for a prevailing party to charge its costs against the losing party. In In re Ricoh Co., Ltd., 661 F.3d 1361 (Fed. Cir. 2011), the Federal Circuit upheld the use of cost-sharing agreements over default statutory rules, allowed the… More...
The Federal Circuit recently cleared the confusion resulting from eBay and confirmed that case eliminated the presumption of irreparable harm in permanent injunction analysis. In Robert Bosch, LLC v. Pylon Manufacturing Corp., 659 F.3d 1142 (2011 Fed. Cir.), the Federal Circuit reversed the More...
A divided Federal Circuit tightened the requirements on parties using an inequitable conduct defense in patent prosecutions. In Therasense, Inc. v. Becton, Dickinson, and Co., 649 F.3d 1276 (Fed. Cir. 2011), the Federal Circuit threw out the previous understanding of inequitable conduct, remarking More...
The United States patent regime will be undergoing fundamental changes over the next 18 months with the ratification of the Leahy-Smith America Invents Act. While a majority of recent coverage has been focused on the new first-to-file provision, patent holders, litigants, and inventors in all More...
The Federal Circuit recently expanded the analysis of a patent process claim beyond the “machine or transformation” test. In Cybersource Corp., v. Retail Decisions, Inc., No. 2009-1358, 2011 U.S. App. WL 3584472, (Fed. Cir. Aug. 16, 2011), the Federal Circuit not only upheld the use of the More...
The Federal Circuit recently vacated a 35 U.S.C.A. § 285 fee award because it found that the defendant continued to have a reasonable basis to continue its patent prosecution in light of a potentially damning admission pointing to anticipation. In Old Reliable Wholesale, Inc., v. Cornell Corp., More...
An en banc panel of the Federal Circuit recently modified contempt examinations in patent infringement injunction cases. In Tivo, Inc. v. Echostar Corp., No. 2009-1374, 2011 U.S. App. WL 1486162, (Fed. Cir. Apr. 20, 2011), the Federal Circuit consolidated the two-part KSM test into a single-step More...
In an issue of first impression, the U.S. Court of Appeals for the Federal Circuit considered whether Fed. R. Civ. P. Rule 9(b)’s particularity requirement applies to false marking claims under §292. In In re BP Lubricants USA, Inc., 97 U.S.P.Q.2d 2025 (Fed. Cir. 2011), the Federal Circuit More...
The Federal Circuit recently rejected the 25 percent rule in calculating damages and assessing a reasonable royalty. In Uniloc USA, Inc. v. Microsoft Corp., 2011 WL ________(Fed. Cir. Jan. 4, 2011), the Federal Circuit found that the 25 percent rule of thumb was an arbitrary rule and was not tied More...
In an issue of first impression, the U.S. Court of Appeals for the Federal Circuit considered the definition of the term “use” for purposes of infringement pursuant to 35 U.S.C. § 271 (a) where elements of the allegedly infringing service were in the possession of more than one individual. In More...
An en banc opinion by the U.S. Court of Appeals for the Federal Circuit narrows the scope of the patent misuse doctrine by holding that antitrust violations alone do not support a patent misuse claim. In Princo Corp. v. International Trade Commission and U.S. Philips Corp., 616 F.3d 1318 (Fed. Cir. More...
