June 2014 — An Exceptional Standard: Lowering the Bar for Awarding Fees in a Patent Infringement Lawsuit

The Supreme Court has recently overturned the current standard for awarding attorneys’ fees to a prevailing party in a patent infringement lawsuit.  In that case, Octane Fitness, LLC v. ICON Health & Fitness, Inc., the Court unanimously agreed that the strict standard of the Court of Appeals for the Federal Circuit (CAFC) unnecessarily limited the ability of the trial court judge to award such fees.
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April 2014 — New Procedures for Determining Patent Eligible Subject Matter

The United States Patent and Trademark Office recently released new guidelines to aid its patent examiners in determining whether or not the subject matter of a patent claim is eligible for patent protection.
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March 2014 — Foreseeability Does Not Bar Doctrine of Equivalents

In Ring & Pinion Service Inc. v. ARB Corporation Ltd., the Federal Circuit found that a substitute that was foreseeable at the time patent application was filed could be covered under the DOE. No. 2013-1238, slip op. (Fed. Cir. Feb. 19, 2014). Thus, even though the patent owner could have foreseen the substitute, there is no requirement that the patent application specifically claim that substitute.
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September 2013 — Hamilton Beach Brands v. Sunbeam Products -- Outsourcing of Product Manufacturing Leads to a Loss of Patent Rights

Precedent of the Supreme Court, and cited in this case by the Court of Appeals for the Federal Circuit (“CAFC”), holds that a disqualifying “offer for sale” occurs under pre-AIA Section 102(b) when the claimed invention is: 1) the subject of a “commercial” offer for sale; and 2) “ready for patenting”. No actual sale need occur, and the offer need only be one in which the offeree could form a binding contract by acceptance.  Actions of foreign parties, offering products for sale to those in the US, may also constitute a disqualifying offer for sale.
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September 2013 The Federal Circuit Provides a Cautionary Tale for Preparing Inventor Declarations

In a recent case Novo Nordisk v. Caraco Pharma., the Federal Circuit provided useful guidance for the preparation of inventor declarations filed under 37 CFR § 1.132 and attorney arguments.  This case serves as a valuable reminder to always be forthright with information or data when working with the USPTO.  The following practices will help ensure compliance with your duty of honesty with the USPTO:  (1) don’t cherry pick data to obtain statistically significant synergistic results; (2) don’t omit parts of the test protocol or hide adverse test results; and (3) don’t overstate the significance of the results. 
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