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IPO Daily News™

Tuesday, 18 June 2019

ITC Infringement Ruling Had Become Moot

* * ITC INFRINGEMENT RULING HAD BECOME MOOT

Hyosung TNS Inc. v. ITC, 17-2563 — Yesterday in an opinion by Judge DYK, the Federal Circuit dismissed an appeal from the ITC with respect to one patent, based upon mootness. After the ITC concluded that Hyosung’s products infringed claims of two Diebold ATM-related patents, Hyosung redesigned its products. U.S. Customs then ruled that that the redesigned products did not infringe one of the patents. On appeal, Hyosung challenged the ITC’s infringement ruling regarding that patent, but the ITC argued that its ruling was moot because the patent had expired and there was no evidence that the ITC orders were violated.

The Federal Circuit agreed with the ITC and vacated the related decision. It explained that “in the circumstances of this case, the potential for collateral consequences resulting from the possible stare decisis effect of our decision, if precedential, does not prevent the appeal from becoming moot.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

* * REISSUE CLAIMS INVALID FOR FAILING TO COMPLY WITH “ORIGINAL PATENT” REQUIREMENT

Forum US, Inc. v. Flow Valve, LLC, 18-1765 — Yesterday in an opinion by Judge REYNA, the Federal Circuit upheld a district court judgment that Flow Valve’s reissue claims were invalid. The patent claimed fixtures for holding pipe fittings during machining. The original patent disclosed only embodiments that used arbors to hold a pipe joint while it rotated. The reissue patent added claims that did not use arbors. Flow Valve argued that a skilled artisan would have understood the disclosure to include embodiments without arbors.

The Federal Circuit found that the reissue claims were invalid for failing to comply with the original patent requirement of Patent Act section 251(a). “[F]or broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention received in reissue claims: ‘[i]t must appear from the face of the instrument that what is covered by the reissue claims was intended to have been covered and secured by the original.’” That a skilled artisan would have understood the newly claimed invention was possible “was insufficient to comply with th[is] standard.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

TODAY ON IPO’S IP CHAT CHANNEL™ — DOCTRINE OF EQUIVALENTS: TIPS FOR PLAINTIFFS, DEFENDANTS, AND PATENT PROSECUTORS

Tune in to the IPO IP Chat Channel™ today, 18 June at 2:00p.m. ET, to hear litigators analyze recent Federal Circuit decisions involving the doctrine of equivalents (DOE) including Amgen v. Sandoz, Duncan Parking v. IPS, Enzo v. Applera, and Mylan v. Aurobindo. In addition to providing insights for litigators, this program will also prove useful to patent prosecutors by highlighting prosecution pitfalls that can lessen the chance of the patentee proving infringement by the DOE in the future.

Our panelists BRIAN COGGIO (Fish and Richardson, PC), MARK FELDSTEIN (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP), and SAILESH PATEL (Schiff Hardin LLP) will discuss:

  • How limitations on DOE play a role, and the difficulties plaintiffs frequently face in making a case for the DOE;
  • Trying to find vitality in the DOE, such as by successfully applying the “function/result/way” or the “insubstantial difference” test; and
  • The danger to successful plaintiffs from the “ensnarement” doctrine, which has seen increased application and can play out as a trial within a trial.

IP Chat Channel™ webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

Satellite Startup Sues Lockheed Martin for Patent Infringement

Last week Denver’s CBS 4 reported that Vector Launch sued Lockheed Martin, claiming that its new SmartSat technology infringes the satellite startup’s patents on its GalacticSky microsatellite software.


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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