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Results: 1-10 of 65

Therasense, Inc v Becton, Dickinson and Co
  • Winston & Strawn LLP
  • USA
  • February 2 2010

An applicant’s earlier statements about prior art, especially one’s own prior art, are material to the PTO when those statements directly contradict the applicant’s position regarding that prior art in the PTO


The standard to evaluate the sufficiency of incorporation by reference language in the patent specification is whether the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented
  • Winston & Strawn LLP
  • USA
  • April 27 2010

A patent applicant involved in a patent interference proceeding appealed a finding by the Board of Patent Appeals and Interferences (“Board”) that the claims of its present ‘880 application were unpatentable for lack of written description


Lincoln National Life Insurance Company v. Transamerica Life Insurance Company, No. 2009-1403, -1491 (Fed. Cir. June 23, 2010)
  • Winston & Strawn LLP
  • USA
  • June 30 2010

A method claim is directly infringed only if each step of the claimed method is performed


Content solutions, such as sports trading cards, are significantly limited by theme and physical confines, meaning that the finite number of available solutions are predictable
  • Winston & Strawn LLP
  • USA
  • March 9 2010

On summary judgment, a district court found invalid as obvious two patents covering pieces of sports memorabilia items attached to trading cards


A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness
  • Winston & Strawn LLP
  • USA
  • March 9 2010

Following a five-day trial, the jury returned a special verdict that defendant willfully infringed claims of a patent relating to a cooling device designed to mount within the drive bay of a computer, that certain independent claims were not invalid as obvious, but that certain dependent claims were obvious


The fact that a patentee used equivocal language when communicating with an accused infringer will not prevent a court from applying equitable estoppel
  • Winston & Strawn LLP
  • USA
  • June 2 2010

The district court granted the accused infringer’s motion for dismissal on equitable estoppel grounds based on the patentee’s three years of silence after contacting the accused infringer concerning infringement


Where an ambiguous disclosure otherwise might have sufficed to support an earlier priority date, contrary arguments made to persuade an examiner to allow the application may preclude the priority claim
  • Winston & Strawn LLP
  • USA
  • May 11 2010

The district court entered summary judgment in favor of the accused infringer, holding that a patent issuing on a continuation-in-part application related to collapsible storage containers was not entitled to an earlier filing date because material claimed had been disclaimed during prosecution of the priority patent by patentee’s attorney


In an interference proceeding, the board must interpret the copied claim in view of the originating disclosure for a written description challenge and in view of the host disclosure for a validity challenge based on prior art
  • Winston & Strawn LLP
  • USA
  • May 11 2010

The senior party provoked an interference with the junior party by copying the claims of the junior party’s patent into the senior party’s application


Although reluctant to exclude an embodiment, the court must “not allow the disclosed embodiment to outweigh the language of the claim, especially when the court’s construction is supported by the intrinsic evidence”
  • Winston & Strawn LLP
  • USA
  • May 11 2010

In a patent interference appeal, the district court construed the claim terms and found that the junior party’s patent did not overlap with, and was not obvious in light of the senior party’s application, and was therefore patentably distinct


In determining inequitable conduct, the withholding of a “highly material” reference alone is not sufficient to establish intent to deceive the Patent Office
  • Winston & Strawn LLP
  • USA
  • May 11 2010

The accused infringer alleged that patentee’s failure to disclose an article to the examiner rendered the patents unenforceable due to inequitable conduct