Plaintiff filed a patent infringement action against the defendant alleging that certain of defendant’s T-shirt transfer products infringed plaintiff’s patent. Defendant filed an answer and counterclaim which accused the plaintiff of inequitable conduct in amending its patent during a reissuance of the patent. Defendant claimed that plaintiff deliberately pursued a…
Mean-plus-function limitations in patent claims require special construction and can result in narrow patent claims that may not be beneficial to patent owners. As a result, many potential infringers will try to take advantage by claiming that certain terms in patent claims are in reality means-plus-function claims. The determination of…
After the Federal Circuit’s decision in Thereasense, Inc. v. Becton, Dickinson and Co., 2011 WL 2028255 (Fed. Cir. 2011), it appeared likely that it would be difficult, if not impossible, to proceed on an inequitable conduct claim. A recent decision from the United States District Court for the District of…
The Federal Circuit’s en banc decision in Therasense v. Becton, Dickinson & Co., is having its intended effect of reigning in inequitable conduct claims. In a recent decision, Judge Otero of the United States District Court for the Central District of California granted summary judgment of no unenforceability on defendant’s…
Failing to act and follow up on cease and desist letters against potential infringers of a patent may preclude enforcement of the patent. This is particularly true when the patent owner does not begin litigation or execute a license for the patent and, during the intervening time, the potential infringer…
In a recent case from the United States District Court for the District of Delaware, the district court held that the defendant was not liable for patent infringement based on the doctrine of divided infringement. The district court based its ruling on the Federal Circuit’s decision in Centillion Data Sys.,…
To have a valid patent, an inventor must disclose sufficient detail in the specification to enable the patent, often referred to as the enablement requirement. To fulfill the enablement requirement, an inventor must disclose enough detail in the patent to teach a person of ordinary skill in the art to…
In pursuing patents for their inventions, inventors need to make sure that earlier filed provisional patent applications filed by other inventors do not preclude the inventor’s patent application. The Federal Circuit’s decision in In re Giacomini, (Fed. Cir. July 7, 2010) affirmed a USPTO Board of Patent Appeal’s decision that…
The written description requirement is of heightened importance in determining the priority date for continuation patent applications. Without a sufficient written description that supports and details the claims of the patent, the priority date of the parent patent may be lost for the continuation application. This issue was recently addressed…
It is well settled law that all inventors who contribute to an invention must be named on the patent application. Nonetheless, where there are many inventors who contribute to the conceptions and reduction to practice of an invention, it can be difficult to determine who should be listed as the…