• Rapid changes in the Chinese legal system, an increasingly attractive venue for IP litigation

    For many years, foreign companies were reluctant to seek and enforce intellectual property protection in China.  A combination of challenging litigation with low damages, the lack of ability to effectively enforce judgments, allegations of protectionism by the courts; a lack of ability to patent certain subject matter, a lack of transparency on legal matters and other factors made China a less desirable jurisdiction.  The Chinese intellectual property legal system has matured rapidly, however. …

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  • Merck Hepatitis C Virus Treatment Patents Unenforceable due to Unclean Hands

    On Wednesday, April 25th, the Court of Appeals for the Federal Circuit issued a precedential decision in Gilead Sciences v. Merck & Co. et. al., which affirmed a lower court’s ruling that Merck could not assert claims from two patents against Gilead because Merck had unclean hands regarding the patents. The case, coming out of the Northern District of California, involves patents covering methods for effectively treating the hepatitis C virus (HCV)… Reviewing the facts of the case, the…

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  • Merck Hepatitis C Virus Treatment Patents Unenforceable due to Unclean Hands

    On Wednesday, April 25th, the Court of Appeals for the Federal Circuit issued a precedential decision in Gilead Sciences v. Merck & Co. et. al., which affirmed a lower court’s ruling that Merck could not assert claims from two patents against Gilead because Merck had unclean hands regarding the patents. The case, coming out of the Northern District of California, involves patents covering methods for effectively treating the hepatitis C virus (HCV)… Reviewing the facts of the case, the…

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  • Reexam Claim Construction Thwarts Subsequent Infringement Claim

    In 01 Communique Lab v. Citrix Systems, the Federal Circuit rejected Communique’s appeal. The court properly relied on a comparison of the allegedly infringing GoToMyPC product to the asserted patent claims, as shown by careful jury instructions. Citrix’s comparison to the BuddyHelp prior art, in aid of a legitimate defense, did not cause prejudice to Communique. In reaching its decision, the Court noted that claim terms must be construed the same way for both invalidity and infringement. Thus,…

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  • In re Eberra (Fed. Cir. 2018)

    Purely Business Method Patent Found Ineligible under Section 101 By Joseph Herndon — In an appeal from a rejection in initial examination of appellant Mark Eberra’s patent application, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“Board”) determination that the claims are patent-ineligible under § 101. The patent application is entitled “Business Method for Opening and Operating a National Television Network” with serial number 12/230,058 (“the ‘058 application”). The Examiner rejected all claims of the ‘058 application as patent-ineligible under 35 U.S.C. § 101 and as anticipated under 35 U.S.C. § 102. The Board initially affirmed the Examiner’s…

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  • Conference & CLE Calendar

    May 8, 2018 – Symposium on Intellectual Property (George Washington University Law School, Pillsbury, NERA Economic Consulting, and Mayer Brown) – Washington, DC May 8, 2018 – “Intellectual Property Valuation and Damages: Nuts and Bolts in 2018″ (The K…

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  • Failure to Disclose Pre-Filing Service Contract == Inequitable Conduct

    Failure to Disclose Pre-Filing Service Contract == Inequitable Conduct

    by Dennis Crouch

    In Energy Heating v. Heat On-The-Fly, the Federal Circuit affirmed the lower court’s holding that Heat On-The-Fly’s U.S. Patent No. 8,171,993 is unenforceable due to inequitable conduct.

    The underlying invention involves a portable system for preparing a heated water and proppant (e.g. sand) mixture for use in hydraulic fracing.  Mr. Hefley, sole inventor and founder of Heat On-The-Fly, filed his priority provisional patent application back in September 2009 that eventually led to the ‘993 patent.

    The problem:  By September 2008 (one year before filing), Heafly and his company had provided his services to dozens of “frac jobs” — collecting almost $2 million in revenue.

    Mr. Hefley admitted at trial that he and his companies used water-heating systems containing all the elements of claim 1 on at least 61 frac jobs before the critical date. The court further found that invoices reflected that Mr. Hefley’s companies collected over $1.8 million for those pre-critical date heat-on-the-fly services.

    Those pre-filing jobs were not disclosed to the USPTO while the ‘993’s application was pending – even though they appear quite material under 102(b) (Pre-AIA).

    Continue reading Failure to Disclose Pre-Filing Service Contract == Inequitable Conduct at Patently-O.

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  • 期待

                            目次はこちら

    期待

    (EXPECT)
    $$ The NTSC and PAL masters produced in this way will be expected to have extremely high picture quality. / この方法で生成された…

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