Patent Law Updates

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Mayo v. Prometheus: The Supreme Court Reverses the Federal Circuit, Finding Prometheus' Patents Cover Laws of Nature and Therefore Ineligible Subject Matter

By Jeffrey J. Zuber and Sarah S. Brooks of Zuber & Taillieu

A unanimous Supreme Court recently reversed the Federal Circuit in Mayo Collaborative Services v. Prometheus Labs Inc., (U.S. S Ct. decided March 20, 2012) holding that the two Prometheus patents do not cover patent eligible subject matter. The Federal Circuit reaffirmed its prior decision holding that Prometheus’ patents covered eligible… More...

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Federal Circuit Invalidates Boston Scientific’s Stent Patent for Being Obvious

Boston Scientific v. Cordis Corp.  |  No. 2008-1073  |  U.S. Court of Appeals for the Federal Circuit  |  1/15/2009

Holding: The U.S. Court of Appeals for the Federal Circuit has reversed a decision against Johnson & Johnson Inc. and its subsidiary Cordis Corp. who were accused of infringing a Boston Scientific Corp. patent. The U.S. District Court for the District of Delaware had earlier sustained a jury finding that Boston… More...

Federal Circuit in In re Bilski Case: Machine-or-Transformation Test Is Now Exclusive Test for Patent Eligibility of a Claimed Process

In re Bilski and Warsaw  |  No. 2007-1130  |  U.S. Court of Appeals for the Federal Circuit  |  10/30/2008

Holding: In a rare full court opinion, the U.S. Court of Appeals for the Federal Circuit has rejected a patent application covering a method for hedging risks in commodities trading for not meeting patent eligibility requirements under Section 101 of the Patent Act. Specifically, the Federal Circuit found that while the… More...

Federal Circuit Reverses, Remands NetMoneyIN's Internet Credit Card Payment Patent Claims

Net Moneyin, Inc. v. Verisign, Inc., et al.  |  No. 2007-1565  |  U.S. Court of Appeals for the Federal Circuit  |  10/20/2008

Holding: In this dispute over patents relating to systems for processing credit card transactions over the internet, the Federal Circuit had the occasion to clarify what a reference must show in order to anticipate a claimed invention. The Federal Circuit specifically held that unless a reference discloses within the four corners… More...

Federal Circuit Vacates Reduced Million-Dollar Verdict to Minks, Remands Polaris Case for New Trial on Damages

Minks v. Polaris Industries, Inc.  |  No. 2007-1490,-1491  |  U.S. Court of Appeals for the Federal Circuit  |  10/17/2008

Holding: In this case concerning a patent directed to an electronic governor system for internal combustion engines, the U.S. Court of Appeals for the Federal Circuit reversed a district court's reduction of a jury's damages award to Floyd Minks, the inventor of the patent. Citing court precedent and the Reexamination Clause… More...

Federal Circuit Remands Waters' Drug Testing Patent Dispute with Cohesive Technologies

Cohesive Technologies, Inc. v. Waters Corp.  |  No. 2008-1029, -1030, -1031, -1032, -1059  |  U.S. Court of Appeals for the Federal Circuit  |  10/7/2008

Holding: In this infringement suit over patents relating to a process used in drug testing, the U.S. Court of Appeals for the Federal Circuit held that the district court erred in issuing a judgment as a matter of law ("JMOL") for plaintiff Cohesive Technologies, Inc. ("Cohesive") on the issue of anticipation,… More...

Federal Circuit Reverses Jury Verdict in Blood Clot-Clearing Patent Suit

Johns Hopkins University, et al. v. Datascope Corp.  |  No. 2007-1530  |  U.S. Court of Appeals for the Federal Circuit  |  10/2/2008

Holding: The U.S. Court of Appeals for the Federal Circuit reversed a 2007 jury finding that Datascope Corp. had infringed three patents held by Johns Hopkins University and Arrow International Inc. on a device that fragments blood clots from vascular grafts in hemodialysis patients. The Federal Circuit held that the alleged… More...

Osteotech Can't Recover Presuit Damages from Regeneration Technologies in Bone-Cleaning Patent Dispute, NY Court Finds

Osteotech, Inc. v. Regeneration Technologies, Inc.  |  No. 3:06-cv-04249-FLW  |  U.S. District Court for the District of New Jersey  |  9/25/2008

Holding: In this suit over a patent for preparation of bone for transplantation, the U.S. District Court for the District of New Jersey ruled that plaintiff Osteotech, Inc. was not entitled to recover pre-suit damages from defendant Regeneration Technologies, Inc. According to the district court, plaintiff failed to comply with the… More...

Aventis' Patent for Lou Gehrig Disease Drug Valid, Federal Circuit Finds

Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc.  |  No. 2007-1513  |  U.S. Court of Appeals for the Federal Circuit  |  10/3/2008

Holding: Aventis' patent relating to the treatment of the Lou Gehrig disease is valid, so determines the U.S. Court of Appeals for the Federal Circuit in ruling against generics drug maker Impax Laboratories, Inc. ("Impax"). In its complaint seeking among others to declare as invalid Aventis' patent-at-issue, Impax argued that an… More...

IGT Not Allowed to Raise Improper Revival as a Defense to Patent Infringement Suit, Federal Circuit Says

Aristocrat Technologies Australia v. International Game Technology  |  No. 2008-1016  |  U.S. Court of Appeals for the Federal Circuit  |  9/22/2008

Holding: Improper revival may not be raised as a defense in an action involving the validity or infringement of a patent, so ruled the U.S. Court of Appeals for the Federal Circuit in this case relating to slot machine game and system patents. Defendants-appellees International Game Technology and IGT (collectively, "IGT")… More...

Federal Circuit Abandons "Point of Novelty" Test in Egyptian Goddess's Design Patent Suit Versus Swisa

Egyptian Goddess, Inc. et al. v. Swisa, Inc., et al.  |  No. 2006-1562  |  U.S. Court of Appeals for the Federal Circuit  |  9/22/2008

Holding: In an en banc opinion, the U.S. Court of Appeals for the Federal Circuit held that the "point of novelty" test should no longer be used in resolving a claim for design patent infringement. Rather, the "ordinary observer" test should be the sole test for determining whether a design patent… More...

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Companies Mentioned

Patent Law

The following companies are mentioned in Patent Law Updates:

Boston Scientific Corp.

Microsoft Corp.

U.S. Patent and Trademark Office

Stryker Corp.

Samsung Electronics America, Inc.

Cordis Corp.

Boston Scientific Scimed, Inc.

Target Corp.

Sears Holding Corp.

Prometheus Laboratories, Inc.

Kohl’s Department Stores, Inc.

Mayo Collaborative Services d.b.a. Mayo Medical Laboratories

K-Mart Corp.

J.C. Penney Company, Inc.

Glamourmom LLC

Audiovox Communications Corp.

Federated Department Stores

McKesson Information Solutions, Inc.

Elizabeth Lange LLC d.b.a. Liz Lange Maternity

Bridge Medical, Inc.

United States Patent and Trademark Office

SmithKline Beecham PLC

Smithkline Beecham Corp. (d.b.a. GlaxoSmithKline, plc.)

SmithKline Beecham Corp. d.b.a GlaxoSmithKline

Scimed Life Systems Inc.

HT Window Fashion Corp.

Glaxo Group Limited d.b.a. GlaxoSmithKline

Ortho-McNeil Pharmaceutical, Inc.

Ranbaxy, Inc.

Mylan Pharmaceutical, Inc.

Teva Pharmaceuticals USA, Inc.

Mylan Laboratories, Inc.

Nokia, Inc.

Stryker Sales Corp.

Stryker Orthopaedics

Howmedica Osteonics Corp.

Acumed, LLC

Quanta Computer, Inc.

Sanyo North America Corp.

LG Electronics, Inc.

Smith & Nephew, Inc.

Cohesive Technologies, Inc.

Waters Corp.

Swisa, Inc.

Egyptian Goddess, Inc.

Motorola, Inc.

Dror Swisa

Johnson & Johnson, Inc.

CVS Corp.

Aeroflex Colorado Springs, Inc.

Additional Resources

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