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: Campbell Can Proceed with Out-of-State Patent Action Against Miale & Ty-Lift Enterprises

Campbell Pet Co. v. Theresa Miale & Ty-Lift Ent.  |  No. 2008-1109  |  U.S. Court of Appeals for the Federal Circuit  |  9/18/2008

Holding: In this appeal concerning in personam jurisdiction, the U.S. Court of Appeals for the Federal Circuit held that plaintiff Campbell Pet Company ("Campbell") can proceed with an out-of-state declaratory judgment action for noninfringement and invalidity against defendants Theresa Miale and Ty-Lift Enterprises. Both parties in this case were exhibitors at… More...

Federal Circuit Sides with Papst in ExcelStor's Hard Drive Patent Action

ExcelStor Technology, Inc. v. Papst Licensing GMBH & Co. KG  |  No. 2008-1140  |  U.S. Court of Appeals for the Federal Circuit  |  9/16/2008

Holding: The U.S. Court of Appeals for the Federal Circuit held that plaintiffs in this breach of contract suit can not invoke the patent exhaustion doctrine as a separate cause of action, since such doctrine is a defense to a patent infringement suit. Plaintiffs ExcelStor, et al. licensed their patents for… More...

Display of Medical Device at Trade Show Can't Establish PJ in Patent Suit, Federal Circuit Rules

Medical Solutions Inc. v. C. Change Surgical  |  No. 2007-1163  |  U.S. Court of Appeals for the Federal Circuit  |  9/9/2008

Holding: The U.S. Court of Appeals for the Federal Circuit held that merely displaying an allegedly infringing medical device at a trade show did not constitute a "use" under patent laws sufficient to establish personal jurisdiction. Medical Solutions, Inc. ("MSI") had earlier sued C Change Surgical LL ("CCS") for patent infringement… More...

Federal Circuit Reverses $49M Award to Adept in "1-800" Technology Dispute with Targus

800 Adept, Inc. v. Murex Securities, Ltd., et al.  |  No. 2007-1272  |  U.S. Court of Appeals for the Federal Circuit  |  8/29/2008

Holding: Vacating a district court's judgment award of $49 million, the U.S. Court of Appeals for the Federal Circuit found that Targus Information Corp.'s services did not infringe 800 Adept's patents relating to toll-free call routing technology. In this appeal, Targus contended that the U.S. District Court for the Middle District… More...

Federal Circuit Sustains USPTO in Inter Partes Reexamination "Original Application" Controversy

Copper Technologies Company v. Jon Dudas, et al.  |  No. 2008-1130  |  U.S. Court of Appeals for the Federal Circuit  |  8/19/2008

Holding: The U.S. Court of Appeals for the Federal Circuit held that the U.S. Patent and Trademark Office ("USPTO") was justified in subjecting a Cooper Technologies, Inc. patent to inter partes re-examination that found the patent invalid. In this regard, the Federal Circuit sustained the interpretation given by the USPTO to… More...

Lexion's Water Supply Recharge Port Merely Improves Its Own Patented Laparascopic Gas Humidifier, Federal Circuit Concludes

Lexion Medical, LLC v. Northgate Tech. Inc.  |  No. 2007-1420, -1440  |  U.S. Court of Appeals for the Federal Circuit  |  8/28/2008

Holding: In this dispute over patents relating to laparoscopic gas humidifier, the U.S. Court of Appeals for the Federal Circuit affirmed the district court's judgment of obviousness. The Federal Circuit specifically found that plaintiff-appellee Lexion's ’609 patent simply modified the invention described in its own ’474 patent via a simple and… More...

Federal Circuit Orders Star Scientific's Tobacco-Curing Patent Suit Against RJ Reynolds to Proceed

Star Scientific Inc. v. R.J. Reynolds Tobacco Co.  |  No. 2007-1448  |  U.S. Court of Appeals for the Federal Circuit  |  8/25/2008

Holding: The U.S. Court of Appeals for the Federal Circuit ruled that an infringement suit filed by Star Scientific, Inc. ("Star") against R.J. Reynolds Tobacco Company over patents directed at tobacco-curing technology should proceed to trial. The U.S. District Court for the District of Maryland earlier issued a judgment of unenforceability… More...

Federal Circuit Upholds Dismissal of Prasco's Suit for Declaratory Judgment on Medicis' Triaz Patents

Prasco LLC v Medicis Pharmaceutical Corp. and Imaginative Research  |  No. 2007-1524  |  U.S. Court of Appeals for the Federal Circuit  |  8/15/2008

Holding: The U.S. Court of Appeals for the Federal Circuit affirmed a district court's dismissal of a suit brought against Medicis Pharmaceutical Corp. by a generics manufacturer that sought a non-infringement judgment. In this case over patents relating to the benzoyl peroxide cleansing product Triaz, the Federal Circuit held that plaintiff-appellant… More...

Federal Circuit Issues Judgment to DSW in Shoe Display Patent Dispute with Shoe Pavilion

DSW, Inc. v. Shoe Pavilion, Inc.  |  No. 08-1085  |  U.S. Court of Appeals for the Federal Circuit  |  8/19/2008

Holding: In a patent dispute over store display methods between shoe retailers DSW and Shoe Pavilion, the U.S. Court of Appeals for the Federal Circuit ruled that DSW's patents were valid, and that Shoe Pavilion should pay the patentee damages for infringement. In reversing the district court's summary judgment, the Federal… More...

Federal Circuit Finds Cordis' Cardiac Catheters Infringed Dr. Voda's Patents, But Affirms Denial of Injunctive Relief

Jan K. Voda v. Cordis  |  2007-1297, -1343  |  U.S. Court of Appeals for the Federal Circuit  |  8/18/2008

Holding: The U.S. Court of Appeals for the Federal Circuit affirmed a jury's finding that Cordis Corp.'s curved catheter infringed Dr. Jan K. Voda's patented catheters that consisted of straight portions. The Federal Circuit explained that Voda introduced substantial evidence establishing that the redesigned curve portion of the XB catheter meets… 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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