This portion of the blog is directed towards tips that may help patent attorneys in prosecution.
PATENT ATTORNEY TAKE-A-WAYS: 1) When drafting appeals to the USPTO board, it is very important to take the time to address each and every limitation that could possibly be argued at a later point. Therefore, patent attorneys should not view appeals or pre-appeal briefs as extensions of office actions that are going to be reviewed [...]
AUSTIN PATENT ATTORNEY OVERVIEW: This is an interesting case that holds that a claimed “range” limitation may not be met even if cited art discloses a wider range. The full opinion can be found here. http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1091.pdf OSRAM SYLVANIA appealed the district courts grant of summary judgment of invalidity of the independent claims in U.S. Patent [...]
AUSTIN PATENT ATTORNEY OVERVIEW: This case discusses issues with terminal disclaimers. Specifically, this case discusses whether a terminal disclaimer can be withdrawn during reissue proceedings under 35 USC § 251 that were in effect upon issuance of a patent. The full opinion may be found here: http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1086.pdf For procedural history, Yamazaki filed a terminal disclaimer [...]
OVERVIEW OF PREGIS CORP v. KAPPOS: In this case Free-Flow and Pregis are competitors in the air-filled packing cushion industry. Essentially, these companies make the air packaging fillers you find in boxes when receiving packages. During the 1990’s, air-packaging became more prevalent over the peanut packaging or using crumpled paper. Free-flow holds 3 patents relating [...]
OVERVIEW: This case deals with the standards for Rule 11 sanctions for patent cases. Rule 11(b) states by presenting to the court a pleading, written motion, or other paper—whether by signing, filing, submitting, or later advocating it—an attorney or unrepresented party certifies that to the best of the person's knowledge, information, and belief, formed after [...]
OVERVIEW: This is an interesting case that deals with several different components of intellectual property law including: patents, trademarks, and civil procedure. Prior to the court of appeals ruling for this case, the district court of Minnesota dismissed this case based on claim preclusion reasoning that Superior’s prior trademark action raised from the same operative [...]
AN AUSTIN PATENT ATTORNEY’S OVERVIEW: This case is an appeal/cross-appeal resulting from a patent infringement lawsuit brought by ePlus against Lawson Software, Inc. (“Lawson”). Lawson appealed the district court ruling and the jury’s finding that Lawson infringes ePlus’s method and system claims. FIGURE 1B of US 6,023,683 ePlus is the assignee of United [...]
OVERVIEW Transocean and Maersk are both deep water drilling companies. In this case, Transocean appealed the decision of the US district court granting summary judgment as a matter of law (JMOL) that Maersk did not infringe on the claims of three of Transocean’s patents 6,047,781, 6,085,851, and 6’068,069 because the claims in these patents are [...]
This is case review discusses 1) standard of enablement and 2) standard for injunctions against future infringement. CASE OVERVIEW: Edwards Lifesciences (“Edwards”) sued defendants Corevalue for infringement of US patent No 5,411,552 (“’552 patent”). The 552 patent is directed towards a prosthetic device for a heart valve, where the valve is mounted on a stent [...]
OVERVIEW: This case deals with standards for direct infringement, joint infringement, and inducement when claims require multiple parties to perform actions. A representative independent claim of Tropp’s patent that he is alleging that Travel Sentry infringed upon is reproduced below. 1. A method of improving airline luggage inspection by a luggage screening entity, comprising: making [...]