Posts Tagged ‘Warren Woessner’

Exergen Corp. v. Thermomedics, Inc. – How to Flunk s. 101

Thursday, June 23rd, 2016

On June 22d, the Fed. Cir. issued a summarily affirmed the district courts Order that the method claims in suit did not pass the Alice/Mayo test for patentable subject matter. Claim 51 of U.S. patent no. 7787938 is representative:

“A method of detecting human body temperature comprising: measuring temperature of a region of skin of the forehead; and processing the measured temperature to provide a body [core] temperature approximation based on heat flow from an internal body temperature to ambient temperature.”

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Same-Day Continuing Applications are Co-pending under s. 120

Tuesday, June 21st, 2016

The outcome of this question of statutory construction was not really in doubt, given the fact that an adverse holding could invalidate thousands of patents which needed same-day copendency to avoid intervening prior art. Immersion Corp. v. HTC Corp., Appeal no. 2015-1574 (Fed. Cir., June 21, 2016).

Finding no clear answer in the language of s.120: “if filed before the patenting…on the first application…,” the panel gave great weight to the longstanding practice of the PTO in permitting priority claims when the continuing applications were filed on the same day that the parent application officially issued:

“This is not a case, as we have explained, where the language of the statute actually contradicts the longstanding  judicial and agency interpretation. Nor is it a case in which the longstanding agency position is plainly outside the agency’s granted authority. Here, the position is an essentially procedural one establishing when the agency will consider an input into its process (the legal act of “filing’) and an output of its process (the legal act of “patenting” to occur relative to each other—neither one being a precisely identifiable self-defining physical act, but a legally filing event.”

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“Unclean Hands” Doctrine Erases Merck’s Damage Award

Thursday, June 16th, 2016

unclean-handsIn my last post on the district court’s ruling in Gilead v. Merck, I implied that Gilead had convinced the Judge that Merck had employed inequitable conduct (“IC”) in conducting its negotiations with Pharmasset, the company Gilead later purchased to obtain the rights to the HCV drug, sofosuvir or Solvaldi®. However, I was reading and writing at an usually high speed and missed the fact that the judge’s finding was based on the pre-IC, unclean hands defense.

I skipped over the section on Therasense, a 2011 Fed. Cir. decision that redefined the IC doctrine, and missed the Judge’s comments distinguishing the two doctrines. In both opinions, it was noted that the unclean hands defense originated with three early S. Ct. decisions in which the “guilty parties” employed egregious misconduct to obtain their patents. The remedy in each case was to bar the wrongdoers ability to sue for infringement of the patents.

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Supreme Court Rewrites the Law of Enhanced Damages

Tuesday, June 14th, 2016

This is a guest post by Janice M. Mueller of Chisum Patent Academy.

faculty-janice-e1402304436911Today the Supreme Court rewrote the law of enhanced damages for willful patent infringement by issuing a unanimous decision in No. 14-1513, Halo Elecs., Inc. v. Pulse Elecs., Inc., 2016 WL 3221515 (U.S. June 13, 2016), and the companion case, No. 14-1520, Stryker Corp. v. Zimmer, Inc., 2016 WL 3221515 (June 13, 2016). Swept away as “unduly rigid,” “inelastic,” impermissibly encumbering” district courts’ discretion, an “artificial construct,” and simply inconsistent with the text of 35 U.S.C. 284, the Federal Circuit’s elaborate framework for determining whether infringement damages should be enhanced (and reviewing such determinations on appeal), as set forth in In re Seagate Tech. LLC, 479 F.3d 1360 (Fed. Cir. 2007) (en banc) and Bard Peripheral Vascular, Inc. v. W.L. Gor & Assoc., Inc., 682 F.3d 1003 (Fed. Cir. 2012), is no longer good law.

You can read the entire post here.