Federal Circuit Says Mistaken Belief Required For Reissue Error

In In re Dinsmore, the Federal Circuit held that the reissue process could not be used to correct an alleged defect in a terminal disclaimer between patents that were not commonly owned, because there had been no “mistaken belief” to support a reissue error within the meaning of the statute. This case underscores the limits of the reissue process and highlights the care that should be taken with terminal disclaimers. Continue reading this entry

Is Evidence Of Obviousness Always Required?

In K/S HIMPP v. Hear-Wear Technologies, LLC, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the decision of the Central Reexamination Unit Examiner that refused to hold claims obvious where the inter partes reexamination requestor had failed to provide any evidence that the claim element at issue was known in the art. Judge Dyk’s strong dissenting opinion is notable for taking the USPTO to task for failing to invoke its own technical expertise to invalidate the claims at issue without requiring direct evidence of obviousness. Continue reading this entry

Supreme Court Adopts Reasonable Certainty Test For Definiteness

On June 2, 2014, the Supreme Court issued a unanimous decision in Nautilus, Inc. v. Biosig Instruments, Inc., rejecting the Federal Circuit’s “insolubly ambiguous” test for patent claim indefiniteness under 35 USC § 112, and instead adopting a “reasonable certainty test.” The Court vacated the Federal Circuit decision rendered under the “insolubly ambiguous” test, and remanded for the Federal Circuit to evaluate Biosig’s claims under the new standard. Continue reading this entry

Federal Circuit Finds Consumer Watchdog Lacks Standing To Appeal Reexamination Decision Upholding WARF Stem Cell Patent

In Consumer Watchdog v. Wisconsin Alumni Research Foundation, the Federal Circuit held that an inter partes reexamination requester must establish an injury in fact sufficient to confer Article III standing in order to appeal a decision of the Patent Trial and Appeal Board to the Federal Circuit. This decision may discourage some parties from instituting inter partes review or post-grant review proceedings, since they may not be able to appeal a decision upholding the challenged patent.

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Supreme Court Reverses Federal Circuit On Induced Infringement In Limelight Networks, Inc. v. Akamai

On June 2, 2014, the Supreme Court issued a unanimous decision in Limelight Networks, Inc. v. Akamai Technologies, Inc., reversing the en banc Federal Circuit decision and holding that there can be no liability for induced infringement under 35 USC § 271(b) when there has been no direct infringement under 35 USC § 271(a). The Court did not dig deeper into the problem of establishing infringement when all of the steps of a method claim are not performed by a single party, and refused to review the Federal Circuit decision in Muniauction because it was not embraced by the petition for certiorari.

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