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Patent Law Summaries
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Boston Scientific Scimed, Inc. v. Cordis Corporation
03-283-SLR, 03-1138-SLR, 2007 WL 989192,
D.Del., 04/04/2007
Holding: A court should employ a two-step analysis in determining whether infringement exists or not. First, the court must construe the asserted claims to ascertain their meaning and scope. Construction of the claims is a question of law. The trier of fact must then compare the properly construed claims with the defendant’s infringing product. This second step involves a question of fact. Literal infringement occurs where each limitation of at least one claim of the patent is found exactly in the alleged infringer's product. A defendant’s product that does not literally infringe a patent may still be found guilty of infringement under the doctrine of equivalents if each limitation of the claim is seen in the defendant’s product either literally or equivalently. More...
Zipwall, LLC v. Fastcap. LLC
05-11852-JLT, 2007 WL 1040679,
D.Mass., 04/09/2007
Holding: In construing a patent claim, the court relies on intrinsic evidence, including the claims, specification, and patent file history if presented in evidence, extrinsic evidence, including expert testimony, dictionary definitions, learned treatises, and principles of interpretation. Patent claims are generally given their ordinary and customary meaning, which is the meaning known by a person of ordinary skill in the invention's art. The patent specification is the single best guide to the meaning of a disputed term; however, a court must be careful not to read a limitation from the specification into the claims. More...
Central Admixture Pharmacy Services, Inc. v. Advanced Cardiac Solutions, P.C.
2006-1307, 2007 WL 96793,
Fed.Cir.(Ala.), 04/03/2007
Holding: A patentee who has made “a mistake of a clerical or typographical nature, or of minor character” may apply to the Patent and Trademark Office (PTO) for a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require re-examination. However, such certificate may be invalidated for “impermissible broadening” upon proof of two elements: (1) the corrected claims are broader than the original claims; and (2) the presence of the clerical or typographical error, or how to correct that error, is not clearly evident to one of skill in the art. More...
Intamin, Ltd. v. Magnetar Technologies, Corp.
05-1546, 05-1579, 2007 WL 1138489,
Fed.Cir.(Cal.), 04/18/2007
Holding: In directing the remand of the case for patent infringement involving magnetic braking system for amusement park rides, the Court of Appeals found that factual matters needed to be threshed out by the district court regarding the issue of whether or not the defendant’s brake system could have been manufactured in such a way that the conducting rail was attached to the track. More...
Ricoh Company, Ltd. v. Asutek Computer, Inc.
06-C-0462-C, 2007 WL 981712,
W.D.Wis., 04/03/2007
Holding: The district court granted defendants’ (foreign competitors’) motion to dismiss a patent infringement suit, stating that it could not exercise personal jurisdiction over the defendants both under the specific and general personal provisions of the Wisconsin long-arm statute. More...
Patent Law Commentaries
Following are Patent Law Commentaries elaborating on the significance of the most important of the Patent Law Summaries.
Quanta Computer v. LG Electronics: Reviving Exhaustion, Applying It to Method Patents
Quanta Computer v. LG Electronics
Posted: 08/15/2008
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
Acumed II Addresses the Issue of Claim Preclusion and When a Patent Claim Could Have Been Brought
Acumed, LLC v. Stryker Corp., et al.
Posted: 05/20/2008
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
Agrizap and Ortho-McNeil: Two Sides of Post-KSR Obviousness
Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., et al.
Posted: 05/16/2008
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
Judkins v. HT Window Fashion: Can’t Stop a Patent Holder from Contacting Your Clients About Possible Infringement
Judkins v. HT Window Fashion Corp.
Posted: 05/13/2008
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.
Tafas v. Dudas: USPTO’s Efforts to Limit Patent Applicant Rights Are Void
Tafas v. Dudas, et al.
Posted: 05/12/2008
Commentary: In an effort to attack its notorious backlog, the USPTO enacted a group of rule changes that placed limits on, among other things, the number of claims a patent applicant could include and the number of times an applicant could amend and continue his application. Traditionally, patent applicants could take unlimited bites at the apple in their pursuit of their patent. In Tafas, the court struck down the rule changes as null and void, and exceeding the scope of the USPTO’s authority. While the Office has the power to enact procedural rules regarding the process, it cannot enact substantive rules – these rules are substantive since they dramatically alter existing policy and the rights and obligations of patent applicants. More...
Related summary: USPTO Rules Are Void For Being Contrary to Law, VA District Court Declares
