Holding: Under Texas law, whether a contract is ambiguous is a question of law, and an ambiguity arises when a contract is reasonably susceptible to more than one meaning. In this case, it was found that ambiguity existed as to whether or not inventor’s patent was reasonably related to assignee employer’s business. More...
Holding: Once a party raises the defense of advice of counsel in response to a charge of willful infringement, the attorney-client privilege is deemed waived. The widely applied standard for determining the scope of a waiver of attorney-client privilege is that the waiver applies to all other communications relating to the same subject matter. More...
Holding: A case-by-case analysis is required when considering whether an attorney should be excluded from access to certain patent information; factual circumstances surrounding each individual counsel's activities, association, and relationship with a party, whether counsel be in-house or retained, must govern any concern for inadvertent or accidental disclosure. More...
Holding: A patent is presumed to be valid, and hence the burden of proving the validity of the patent in an infringement case does not rest on the patent holder. Rather, it is the defendant which should discharge the burden of proving by clear and convincing evidence that the patent is invalid. More...
Holding: In construing patent claims, the district court defined the phrase, “first and second chuck walls forming a juncture therebetween,” as “first and second walls encircling the chuck forming a place between them at which they met”; the phrase, “circumferentially extending peripheral cover hook,” as “curved portion of the can end that was to be formed into a portion of a double seam”; and the phrase, “seaming panel,” as “curved innermost portion of the peripheral cover hook.” More...
Following are Patent Law Commentaries elaborating on the significance of the most important of the Patent Law Summaries.
Commentary: In Cohesive Technologies, Inc. v. Waters Corporation, 543 F.3d 1351 (Fed. Cir. 2008), the U.S. Court of Appeals for the Federal Circuit held that an invention may be anticipated, even though it is proven non-obvious. The Court drew a clear separating line between the novelty analysis of 35 U.S.C. section 102 and the non-obviousness analysis of 35 U.S.C. section 103(a). While the general holding is perhaps well-founded, in a case such as this where the references cited under §102 and §103 were identical, the decision to remand seems wasteful and inappropriate. More...
Related summary: Federal Circuit Remands Waters' Drug Testing Patent Dispute with Cohesive Technologies
Commentary: In the case Quanta Computer v. LG Electronics, ___ U.S. ____, 128 S.Ct. 2109 (2008), the United States Supreme Court clarifies and expands upon its holding in United States v. Univis Lens Co. In Univis, the court held that a patent is exhausted upon the sale of unfinished components that substantially embody the patent and which have no use except to practice the patent. In Quanta, the court clarified that the same analysis applies to process or method patents, not just product patents: When a component substantially embodies the process and cannot be used for any purpose other than to practice the patent, the process patent is exhausted upon sale of that component. The decision makes it more difficult for patentees to extract royalties from multiple parties for the same device. However, it revitalizes the integrity of the exhaustion doctrine and provides more certainty for downstream purchasers. More...
Related summary: Supreme Court Reverses Federal Circuit’s Ruling, Finds in Favor of Quanta in LG’s Computer Technology Patent Suit
Commentary: In the recent case of Acumed, LLC v. Stryker Corp.,et al., (No. 2007-1115) (Fed. Cir., May 13, 2008) (“Acumed II”), the Federal Circuit addressed the meaning and application of language barring re-litigation of claims that “could have been brought” in a prior patent infringement case. More...
Related summary: Federal Circuit Reverses District Court’s Ruling in Acumed v. Stryker, Remands Case
Commentary: In KSR v. Teleflex, 550 U.S. ____, 127 S. Ct. 1727 (2007), the U.S. Supreme Court broadened the applicable test in determining whether an invention is “obvious.” As predicted by patent law pundits, the KSR decision was followed by a number of cases in which infringers defended their actions – and won – by having the patent in question declared invalid for obviousness under this new standard. The Court of Appeals for the Federal Circuit (the CAFC) recently heard and decided two separate cases that addressed the issue of obviousness post-KSR. These cases shed further light on the new standard for determining obviousness. While the results are quite different, the lessons for practitioners are, ultimately, the same. More...
Related summary: Federal Circuit Affirms Validity of Ortho-McNeil’s Patent On Epilepsy Drug Topomax
Commentary: When a patent-holder discovers infringement, it’s not unreasonable for him to want to notify the alleged infringer’s clients of the infringement. Of course the alleged infringer would prefer that this communication with its clients not take place. But, as the Judkins case instructs, it will be nearly impossible for an alleged infringer to stop a patent holder from contacting its clients. More...
Related summary: Patent Owners Allowed to Warn Buyers about Competitor's Infringing Products: Judkins v. HT Window Fashion Corp.
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Manual for Patent Examining Procedure (pdf, 56mb)
Patent Act (pdf, 1.4mb)
Patent Rules (pdf, 3.4mb)
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