Before Newman, Dyk, and Chen. Appeal from the Patent Trial and Appeal Board.
Summary: An injury-in-fact is required to establish Article III standing for judicial review of agency action, even if a statute permits such review.
On December 28, 2018, both Calvin Klein and the parent company of the department store Saks Fifth Avenue, were sued by Wongab Corporation in the U.S. District Court for the…
Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Dissenting opinion to denial of petition for rehearing written by Reyna and joined by Newman and Lourie.
Summary: The Federal Circuit elected not to review en banc the issue of whether servers or similar equipment in third-party facilities constitute a regular and established place of business for purposes of determining whether venue is proper under 28 U.S.C. § 1400(b). The dissenters argued that the Federal Circuit’s denial sidestepped the purpose of mandamus relief and left unanswered a critical question that affects venue.
Before Lourie, Bryson, and Wallach. Appeal from the Patent Trial and Appeal Board.
Summary: A party joined to an inter partes review has the right to appeal the Board’s final written decision even if the initial petitioner does not appeal.
Before Lourie, Dyk and Taranto. Consolidated Appeals from the Patent Trial and Appeal Board and the Southern District of California.
Summary: A person is a joint inventor of the anticipating portions of a reference for the purposes of 35 U.S.C. § 102(e) when the person’s contributions to that anticipating portion are significant in view of the invention as a whole.
Much of the modern economy is driven by software development. Companies are creating and refining new apps that run on mobile devices, and using machine learning to provide users with personalized user interfaces and content. Consumers expect intuitive and polished interfaces. After devoting significant energy and resources to developing software, many companies seek to protect their intellectual property. Unfortunately, a bewildering legal gauntlet confronts them. At the threshold of this gauntlet lies a major obstacle: is their software even “eligible” for patent protection?
Before Chief Judge Prost, Moore, and Taranto. Appeal from the United States District Court for the Eastern District of Texas.
Summary: An invention is not “ready for patenting” to trigger a public use bar until the invention has been tested in a variety of settings and is known to work for its intended purpose.
Before Dyk, Schall, and Reyna. Appeal from U.S. District Court for the Eastern District of Virginia.
Summary: The USPTO is only authorized to reduce Patent Term Adjustment (PTA) for applicant delay equal to a period of time during which applicant failed to engage in reasonable efforts to conclude prosecution.
Before Dyk, Taranto, and Stoll. Appeal from U.S. District Court for the District of Delaware.
Summary: The Federal Circuit lacks jurisdiction to hear an appeal from a district court judgment that is non-final because it does not foreclose a litigant’s ability to establish an element of its claim.
Global medical device company Boston Scientific has announced on December 27, 2018, that it exercised its option to acquire remaining shares of privately-held medical device company Millipede, Inc. upon its recent successful completion of a first-in-human clinical study. Boston Scientific previously announced on January 24, 2018, an agreement to make a $90 million investment in Millipede. The current press release states the prior agreement included an option for Boston Scientific to “acquire [Millipede’s] remaining shares for $325M at closing, with a $125M payment becoming available upon achievement of a commercial milestone.”
