Dynamic 3D Geosolutions LLC v. Schlumberger Limited
(No. 2015-1628, 9/12/16) (Lourie, Wallach, Hughes)
September 12, 2016 2:49 PM
Lourie, J. Affirming disqualification of plaintiff's counsel
and affirming dismissal of complaint. "We recognize that there
are important societal rights implicated by attorney
disqualification, such as the right of a party to counsel of its
choice and an attorney's right to freely practice his or her
profession. However, there is an overriding countervailing concern
suffusing the ethical rules: a client's entitlement to an
attorney's adherence to her duty of loyalty, encompassing a
duty of confidentiality... It was inappropriate to hire a senior
attorney, one intimately knowledgeable concerning a particular
product, its competitors, and its associated business strategies
and intellectual property, into a position in which she not only
participated in but in fact played a significant role in acquiring
a patent used to accuse her former employer's product of patent
infringement." Disqualification extended to in-house and
outside counsel. Wallach, J. filled a separate concurrence.
Stryker Corporation v. Zimmer, Inc. (No. 2013-1668,
9/12/16) (Prost, Newman, Hughes)
September 12, 2016 9:22 AM
Prost, J. On remand from the Supreme Court, vacating and
remanding district court's award of treble damages. Also
vacating and remanding district court's finding that case was
exceptional and its award of attorneys' fees. Also reaffirming
finding that patents related to pulsed lavage devices were valid
and infringed and affirming finding of willful infringement. The
"decision to enhance damages is a discretionary one that the
district court should make based on the circumstances of the
case... Though we uphold the district court's willfulness
determination, it does not necessarily follow that the case is
Software Rights Archive, LLC v. Facebook, Inc. (No.
2015-1649, -1650, -1651, -1652, -1653, 9/9/16) (Newman, Mayer,
September 9, 2016 11:10 AM
Per Curiam. Affirming Board decision in an IPR that some claims,
related to computerized research, are unpatentable and reversing
the Board decision as to other claims and finding those other
claims unpatentable. Chen, J. dissented-in-part.
UCB, Inc. v. Yeda Research and Development (No.
2015-1957, 9/8/16) (Newman, Lourie, Chen)
September 8, 2016 3:19 PM
Newman, J. Affirming summary judgment of non-infringement.
"The question is whether the monoclonal antibody of [the
asserted claim] includes chimeric or humanized antibodies, when the
patent specification describes only murine (mouse) monoclonal
antibodies." During prosecution, the examiner rejected claims
that would have covered humanized antibodies and the patentee
acquiesced in that rejection. That file history prohibited
construing the asserted claim to cover humanized antibodies.
Asia Vital Components Co. v. Asetek Danmark A/S (No.
2015-1597, 9/8/16) (Prost, Linn, Taranto)
September 8, 2016 1:40 PM
Prost, J. Reversing dismissal of declaratory judgment action and
remanding. Patentee did not specifically accuse products made by
the plaintiff, but the totality of the circumstances nonetheless
provided subject matter jurisdiction for the declaratory judgment
action. "The question of jurisdiction does not turn on
[patentee's] knowledge of the specific  products or whether
[patentee] specifically alleged that the [particular] products
infringed the asserted patents; instead, the question is whether
under all the circumstances, [patentee's] actions 'can be
reasonably inferred as demonstrating intent to enforce a
Here is a technique for rapidly drafting claims, for a patent application. This is a brainstorming mechanism that works for one person, or two, or more, and uses a free-form drawing or diagram to both gather words and prompt writing.
The PTO launched the Post Prosecution Pilot Program, which affords patent applicants an attractive alternative to the procedures currently available for responding to "finally" rejected patent applications.
The second prong of the Alice test is commonly abbreviated as requiring an "inventive concept." Of course, that same nomenclature is used by many international patent laws as a synonym for nonobviousness.
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