In December, 2009 the Court of Appeals for the Federal Circuit issued its opinion in Forest Group v. Bon Tool Company (Forest Group v. Bon Tool Co., (Fed Cir. 2009) 590 F.3d 1295) and changed the landscape relating to damages under the “false marking” section of the patent laws. The decision in Forest altered nearly 100 years of precedent by dramatically increasing potential damage awards available to plaintiffs complaining that products are improperly identified as “patented” or “patent pending.”
Continue Reading Forest, Solo, and the Ten Trillion Dollar Man
Supreme Court Holds Business Method Patents Remain Viable
The Supreme Court recently decided a key case addressing the patentability of business methods. In In Re Bilski, 2010 U.S. Lexis 5521(June 28, 2010), the Court rejected the Federal Circuit of Court of Appeals’ “machine-or-transformation” test for determining the patentability of a process. The Court also declined to adopt a rule that business methods are not patentable.Continue Reading Supreme Court Holds Business Method Patents Remain Viable
There is a Separate Written Description Requirement
By:The Federal Circuit Court of Appeals has reaffirmed that patent applications must satisfy a written description requirement separate from the enablement requirement. In Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010), an en banc Court of Appeals held that 35 U.S.C. §112, first paragraph, contains a written description requirement separate and in addition to the enablement requirement.
The plaintiff, Ariad Pharmaceuticals, sued Eli Lilly for infringement of a patent pertaining to methods for using a transcription factor to modify gene expression. At trial, the jury found that Eli Lilly had infringed the patent and that the claims of the patent were valid. The district court denied Eli Lilly’s motion for judgment as a matter of law. Continue Reading There is a Separate Written Description Requirement
Patent Minefield Now a Risk for Trademark Owners
by Matt Massari
Patent lawyers have understood the consequences of sending a cease and desist letter to a potential infringer since the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). After MedImmune, a party contemplating sending such a letter risks that the recipient may file for a declaratory judgment in their own jurisdiction. This may require the sender to appear in a distant court, at their own expense. Thus, the patent owner must be very careful when communicating with possible infringers. Several recent decisions have applied the MedImmune standard for declaratory judgment jurisdiction to trademark controversies, making it difficult for trademark lawyers to avoid exposure to a declaratory judgment action after contacting a potential infringer. Continue Reading Patent Minefield Now a Risk for Trademark Owners
Patent Exhaustion Clarified
By The “first sale” or “patent exhaustion” doctrine provides that the first unrestricted sale by a patent owner of a patented product exhausts the patent owner’s control over that particular item. The doctrine is also analyzed as an implied license to the purchaser of a particular product of the rights to use and resell the product. Stated another way, the initial authorized sale of a patented item terminates the patent owner’s rights with respect to that item. Continue Reading Patent Exhaustion Clarified