Bottom line: Claim sets that include independent claims directed to different types of entities (e.g., manufacturer v. end user, receiver v. transmitter, method v. apparatus) may enable the patent owner to license its patents to one entity without implicating patent exhaustion for a different entity. In Helferich v. NY Times (Fed. Cir. 2015), the patent owner licensed a set of … [Read more...]
Patent infringement defenses
Patent infringement defenses are those defenses that avoid or reduce liability for patent infringement after patent infringement is established by the patent owner.
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In Abbvie v. Janssen (Fed. Cir. 2014), the claims of the patents at issue defined the claimed invention by its function, rather than by its structure. To put it in layman’s terms, it claimed a sports car going 0 to 60 mph within X seconds instead of claiming a V-12 engine having certain technical features that enabled the car to reach 0-60 in so many seconds. Functional … [Read more...]
Bottom Line: Inequitable conduct is an often raised defense but rarely successful. As such, the courts have been shifting the burden of providing inequitable conduct so that the courts can get to the merits of the case more often. The failure to disclose material information to the patent office that may lead the examiner to reject a patent application during patent … [Read more...]
Inequitable conduct is a defense to patent infringement to avoid liability for patent infringement. However, inequitable conduct also offers a way to introduce unfavorable facts about the patent owner, inventors, etc. to paint the plaintiff as a bad actor and not as someone that has helped society in bringing forth the invention protected by the patent. It is a defense that … [Read more...]
In Interval Licensing, LLC v. AOL, Inc. (Fed. Cir. Sept. 10, 2014), the Federal Circuit invalidated a patent claim as being indefinite under a new standard set forth by the Supreme Court of the United States in Biosig v. Nautilus (S. Ct. April 28, 2014). Interval Licensing is instructional not just for evaluating indefiniteness under the new standard, but also on how to write … [Read more...]
The claims in a patent are supposed to inform others about the scope of patent protection afforded under the patent so people know what the can and cannot be marketed regarding the patent. In particular, the Patent Act requires that a patent specification “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant … [Read more...]
Sometimes it is very difficult to predict how the courts will decide whether claimed combinations are invalid for obviousness. In Hoffman v. Apotex (Fed. Cir. 2014), the Federal Circuit invalidated a number of claims directed to a method of administering a drug described with ranges as being obvious. The patent at issue was directed to a drug for treating osteoporosis. The … [Read more...]
The Federal Circuit in Takeda v. Zydus (Fed. Cir. Feb. 20, 2014) resolved issues in relation to claim construction, infringement and invalidity. The patent was directed to an orally ingestable tablet that disintegrated in your mouth where the formulation contains granules small enough (i.e., 400 µm or less) to avoid a feeling of roughness in the patient’s mouth upon … [Read more...]