ARE Patent Law Alert:
Federal Circuit Affirms PTO’s Finding of Invalidity After Previously Finding Same Patent Not Invalid

(May 21, 2012) On May 17, 2012, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the different burdens of proof employed against a patent challenger in litigation in a Federal District Court and at the U.S. Patent and Trademark Office (“PTO”) in a reexamination proceeding. In re Baxter Int’l, No. 2011-1073, […]

ARE Litigation Alert:U.S. Supreme Court Finds Prometheus Method of Diagnosing and/or Treating Unpatentable Law of Nature

U.S. Supreme Court Finds Prometheus Method of Diagnosing and/or Treating Unpatentable Law of Nature By Charles R. Macedo, Michael J. Kasdan and David Boag* (March 20, 2012)  On March 20, 2012, in a unanimous decision authored by Justice Breyer, the U.S. Supreme Court  found patent claims directed to diagnosing and/or treating a disease to be […]

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Federal Circuit Clarifies Recapture Rule For Analysis Of Reissue Claims

(May 11, 2012). Earlier this week, the Federal Circuit in In re Youman, No. 2011-1136, 2012 U.S. App. LEXIS 9346 (Fed. Cir. May 8, 2012) clarified the meets and bounds of the recapture rule for broadening reissue patents. Generally, the reissue statute allows a patentee to broaden claims in its original patent if the patentee […]

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Federal Circuit Finds Patents Unenforceable Under Therasense Standard

(May 11, 2012) On April 9, 2012, the Federal Circuit affirmed the U.S. District Court for the District of Delaware’s holding that Aventis Pharma’s patent claims were unenforceable on inequitable conduct grounds under the higher standard for unenforceability set forth in Therasense. See Aventis Pharma S.A. v. Hospira, 2012 U.S. App. LEXIS 7095, at *20 […]

$24 million judgment of wilful infringement affirmed by Federal Circuit

Powell v Home Depot USA, Inc., No 2010-1409, -1416, US Court of Appeals for the Federal Circuit, 2011 US App. LEXIS 22838, 14 November 2011   Abstract The US Federal Circuit affirms a jury verdict that a defendant wilfully infringed a patent on a saw guard, discussing claim construction, damages, enhanced damages, and inequitable conduct. […]

Federal circuit grants mandamus on Delaware transfer motion

In re Link_A_Media Devices Corp., 662 F.3d 1221, US Court of Appeals for the Federal Circuit, 2 December 2011 (per curiam)   Abstract The US Federal Circuit has granted a petition for a writ of mandamus directing the US District Court of Delaware to transfer a case to the Northern District of California. The district […]

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Supreme Court Holds New Evidence Can Be Presented In A Civil Action Brought In District Courts Against The PTO

On April 18, 2012, in a unanimous decision authored by Justice Thomas, the U.S. Supreme Court held that a patent applicant is entitled to present new evidence in a civil action brought under 35 U.S.C. § 145 against the Director of the U.S. Patent and Trademark Office (“PTO”), and that any factual disputes created by […]

In the Press: TTOs often walk a fine line when negotiating rights to improvements

Technology Transfer Tactics quotes Charles R. Macedo, Partner, at Amster, Rothstein & Ebentsein, LLP. The issues involved are typically straightforward, and both sides generally have a good point to make in the quest for improvement rights, notes Charles R. Macedo, partner at Amster, Rothstein & Ebenstein LLP, New York, and author of The Corporate Insider’s […]

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Second Circuit Clarifies Digital Millenium Copyright Act’s Safe Harbor Provisions In Viacom International, Inc. v. Youtube, Inc. Decision

(April 18, 2012)  On April 5, 2012, a unanimous panel of the U.S. Court of Appeals for the Second Circuit clarified both (i) the proper interpretation of 17 U.S.C. § 512(c)’s safe harbor language regarding an online service provider’s “right and ability to control” infringing activity, and (ii) whether certain software functions that are made […]

ARE Patent Law Alert:The Supreme Court Denies Cert in favor of First Quality

(January 23, 2011) On January 23, 2011, the U.S. Supreme Court agreed with First Quality Baby Products, LLC and First Quality Retail Services, LLC (“First Quality”) and denied a request for writ of certiorari by Kimberly-Clark Worldwide, Inc. and Kimberly-Clark Global Sales, LLC (“K-C”). K-C in its petition was seeking review by the Supreme Court […]