Fletcher YoderWhen drafting, ensure claim terms are defined in the specification, even if applicant thinks they are generally known in the art. Also consider providing example calculations or measurements if included in claims. When litigating, ensure a party provides a counter argument to each argument presented, including expert testimony. Consider providing arguments in the alternative.
Federal Circuit affirms a finding of a patent invalid due to obviousness, a finding that the patent is unenforceable due to inequitable conduct, and a Walker Process antitrust award
A third party cannot sue the PTO under the APA to seek judicial review of the decision by the PTO to issue a patent.
Best mode requirement does not actually require a disclosure of the best mode, but rather requires sufficient disclosure to enable one of skill in the art to practice the best mode without undue experimentation.
Federal Circuit affirmed summary judgment of invalidity for obviousness finding that there was no material factual dispute regarding scope and content of prior art, differences between prior art and asserted claims, level of ordinary skill in the art and secondary considerations since components required to assemble claimed inventions are simple mechanical parts that are well known in the art, and need for safer utility lighters was recognized as of the priority date of the patents-in-suit, since parties agree that cigarette lighters and utility lighters are analogous arts, and person of ordinary skill would thus be directed to claimed safety utility lighters by combining available utility lighters with prior art automatic locking mechanisms on cigarette lighters, and since undisputed facts therefore compel conclusion of obviousness, which cannot be overcome by plaintiff’s far weaker showing of secondary considerations.
Patentee appeals from summary judgment finding on the issue of infringement in defendant’s favor. Defendant appeals from summary judgment findings on the issues of laches, inequitable conduct, invalidity, and inventorship in patentee’s favor.
A patentee has the burden of proving priority to the filing date of an earlier application if priority was not considered during prosecution.
Dependent claims must reference a previous claim and must further limit the subject matter of that claim. Failure to comply with this requirement invalidates the claim under 35 U.S.C. §112.
Declaratory judgment counterclaims allow adjudication of invalidity and unenforceability counterclaims after noninfringement decision
Infringement plaintiff’s use of claimed process for producing “transformable” cells in its own laboratories, more than one year before application for patent in suit was filed, was not “public use” that bars patentability, since plaintiff’s invention was not given or sold to “another,” or used to create product given or sold to another.