Reexamination Bites Another Patent Owner

Stephen G. Adrian | April 16, 2014

In Re Teles AG Informationstechnologien and Sigram Schindler Beteiligungsgesellschaft MBH

Decided April 4, 2014,

Before Dyk, Moore, and Wallach.  Opinion by Dyk


This precedential decision illustrates a number of strategies that a patent owner may need to consider when an unfavorable decision is rendered by the Board of Patent Appeals and Interferences (now Patent Trial and Appeal Board) during a reexamination proceeding. Although an appeal to the Federal Circuit is most commonly pursued by a patent applicant, why would a patent owner consider an appeal to the U.S. District Court for the District of Columbia? In addition, this decision illustrates that while a broad claim construction may be desirable to ensnare infringers, a broad claim construction can also come back to bite the patent owner in a way to render claims invalid over the prior art.

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The Court Gives Roadmap to Patent Trolls on How to Obtain Lucrative Settlements from Customers without Declaratory Judgment Recourse from Manufacturers.

Stephen Parker | April 11, 2014

Microsoft v. DataTern, Inc. and SAP v. DataTern, Inc. (Precedential Opinion).

April 4, 2014

Before Chief Judge Rader, Prost and Moore.  Opinion by Moore.  Opinion dissenting-in-part by Rader.


DataTern, Inc., a company established to exploit IP opportunities (aka patent troll), sued hundreds of customers of Microsoft and SAP alleging infringement of its’ patents for a software product that facilitates interfacing of object-oriented applications with relational databases, seeking lucrative settlements from consumers disinterested in combating a full patent lawsuit without suing Microsoft and SAP.  Despite DataTern’s effort to avoid litigation with Microsoft and SAP, who as manufacturers of the products were well equipped and interested to seek legal recourse, Microsoft and SAP successfully filed declaratory judgment actions in New York district court and were awarded summary judgments for non-infringement.  DataTern appealed to the CAFC.   Although the CAFC affirmed the district court’s decision, as explained in the dissenting-in-part opinion of Chief Judge Rader, the CAFC’s opinion “creates a roadmap [for patent troll’s] to avoid declaratory judgment” actions by taking steps to ensure that their claim charts presented to allegedly infringing customers reference only customer activity and not activity of the product manufacturers.

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Nothing Lost but Nothing Gained: Generic Producer Evades Infringement but Fails to Invalidate Patent under §112.

Adele Critchley | April 3, 2014

Alcon Research Ltd., v. Barr Laboratories, Inc.

March 18, 2014.

Before Newman, Lourie and Bryson. Opinion by Lourie.


The CAFC reversed the District Court’s judgment that Alcon’s patents lacked enabling disclosure and sufficient written description as Barr had failed to demonstrate that some experimentation was required, let alone undue experimentation.  Barr’s allegations that the claims were “too broad,” the specification was “too limited,” and the art was “too unpredictable,” was not sufficient without evidence to support that undue experimentation was required in order to practice the patented method.

The CAFC, however, affirmed the District Court’s judgment of non-infringement since Alcon had failed to prove that the polyethoxylated castor oil (“PECO)” in Barr’s product was present in a “chemically-stabilizing amount.”

The CAFC denied Barr’s judgment as a matter of law (“JMOL”) and Rule 59(e) (alter or amend a judgment) motions on non-infringement for the two patents that were omitted from the pretrial order and not litigated.

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No Claim Preclusion. No Issue Preclusion. No Problem. The Kessler Doctrine Fills the Gap.

Andrew Melick | March 26, 2014

Brain Life, LLC v. Elekta Inc.

March 24, 2014

Before O’Malley, Bryson, Wallach.  Opinion by O’Malley



In a prior case, Medical Instrumentation Diagnostics Corporation (MIDCO) brought a patent infringement suit against Elekta asserting the apparatus claims and the method claims of US Patent No. 5,398,684 (“the ‘684 patent”). The method claims were later dropped from the suit “without prejudice.” MIDCO ended up losing the infringement action. Brain Life, the successor-in-interest of the ‘684 patent, brought a suit against Elekta alleging infringement of the method claims of the same patent against the same products except for one additional product.

The CAFC held that claim preclusion did not bar the suit with regard to alleged acts of infringement occurring after the judgment in the first suit brought by MIDCO. The CAFC also held that issue preclusion did not bar the suit with regard to the method claims because the method claims were not “actually litigated.” However, under the “Kessler Doctrine,” Elekta has a right to use the products held not to be infringing the ‘684 patent in the first action freely and without harassment. Thus, the CAFC affirmed the District Court’s determination that the suit is barred with regard to the products involved in the first action, albeit, on different grounds from the District Court. The CAFC vacated the District Court’s decision and remanded the case with regard to the product that was not previously litigated in the MIDCO case.

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