Vas-Cath Inc. v. Mahurkar
Brief

CitationVas-Cath Inc. v. Sakharam D. Mahurkar, 935 F.2d 1555, 1991 U.S. App. LEXIS 11500, 19 U.S.P.Q.2D (BNA) 1111 (Fed. Cir. June 7, 1991) Brief Fact Summary. Mahurkar’s (Defendant) original application including drawings of his catheter invention, and he later attempted to attach written descriptions. Synopsis of Rule of Law. Drawings may be adequate to provide the written description of the invention. ...

USM Corp. v. SPS Technologies, Inc.
Brief

CitationUSM Corp. v. SPS Techs., Inc., 694 F.2d 505, 1982 U.S. App. LEXIS 23603, 216 U.S.P.Q. (BNA) 959, 1982-83 Trade Cas. (CCH) P65,077 (7th Cir. Ill. Dec. 3, 1982) Brief Fact Summary. SPS (Defendant) allowed USM (Plaintiff) to license out its patented product, but charged a higher fee if Plaintiff sublicensed with certain companies. Synopsis of Rule of Law. Patent misuse charges should be evaluated under antitrust principles, and there is no antitrust prohibition against a patent owner’s use of price discrimination to maximize his income. ...

Titanium Metals Corp. of America v. Banner
Brief

CitationTitanium Metals Corp. v. Banner, 778 F.2d 775, 1985 U.S. App. LEXIS 15318, 227 U.S.P.Q. (BNA) 773 (Fed. Cir. Nov. 7, 1985) Brief Fact Summary. A patent application was licensed by inventor-employees to the employer, Titanium Metals Corp. of America (Plaintiff).  There were three claims related to titanium allowed in the application.  The examiner rejected the claims based on obviousness and anticipation.  Plaintiff filed a civil action in the U.S. District Court for the District of Columbia against Banner (Defendant).  The District Cour ...

The Gentry Gallery, Inc. v. The Berkline Corp.
Brief

CitationGentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1998 U.S. App. LEXIS 1079, 45 U.S.P.Q.2D (BNA) 1498 (Fed. Cir. Jan. 27, 1998) Brief Fact Summary. Gentry (Plaintiff) sued Berkline (Defendant) claiming patent infringement by Defendant’s manufacturing and selling of sectional sofas having two recliners facing in the same direction. Synopsis of Rule of Law. Patent claims may not be broader than the supporting disclosure, therefore a narrow disclosure will limit the extent of the claim. ...

Scott v. Finney
Brief

CitationScott v. Finney, 34 F.3d 1058, 1994 U.S. App. LEXIS 25151, 32 U.S.P.Q.2D (BNA) 1115 (Fed. Cir. Sept. 14, 1994) Brief Fact Summary. Dr. Scott (Plaintiff) contended that his testing of a penile implant was adequate to show reduction to practice. Synopsis of Rule of Law. The standard to determine whether there has been sufficient testing to show reduction to practice is a commonsense assessment of whether the invention in fact solved the problem. ...

Schering Corp. v. Geneva Pharmaceuticals, Inc
Brief

CitationSchering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 2003 U.S. App. LEXIS 15496, 67 U.S.P.Q.2D (BNA) 1664 (Fed. Cir. Aug. 1, 2003) Brief Fact Summary. Schering Corp. (Plaintiff) owns two patents on antihistamines.  The first patent’s claims expired and the second patent’s claims were close to expiring.  Geneva Pharmaceuticals, Inc. (Defendant) started marketing a generic antihistamine, which Plaintiff claimed was an infringement on their second patent’s claims.  The District Court determined by summary judgment that two of the ...

Sanofi-Synthelabo v. Apotex, Inc
Brief

CitationSanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 2006 U.S. App. LEXIS 30090, 81 U.S.P.Q.2D (BNA) 1097 (Fed. Cir. Dec. 8, 2006) Brief Fact Summary. Apotex (Defendant) wanted to make and market a generic version of Sanofi’s (Plaintiff) patented drug.  Plaintiff was granted the preliminary injunction they requested. Synopsis of Rule of Law. Upon satisfaction of reasonable likelihood of success on the merits, irreparable harm without the injunction, balancing hardships in favor of the moving party, a preliminary injunction is appropriate; and the injunction also serve ...

Regents of the University of California v. Eli Lilly & Co.
Brief

CitationRegents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1997 U.S. App. LEXIS 18221, 43 U.S.P.Q.2D (BNA) 1398 (Fed. Cir. July 22, 1997) Brief Fact Summary. The University (Plaintiff) brought suit against Eli Lilly & Co. (Defendant) claiming infringement.  Defendant argued claiming that the patent was invalid due to specifications that failed to provide a sufficient written description of the subject matter. Synopsis of Rule of Law. Claims for a DNA sequence will be considered invalid if they fail to provide a sufficient written description of the subject matte ...

Phillips v. AWH Corporation
Brief

CitationPhillips v. AWH Corp., 415 F.3d 1303, 2005 U.S. App. LEXIS 13954, 75 U.S.P.Q.2D (BNA) 1321 (Fed. Cir. July 12, 2005) Brief Fact Summary. Phillips (Plaintiff) sued AWH Corp. (Defendant) for patent infringement, and contended that the term “baffles” in claim 1 of his patented invention (the ‘798 patent) was not used in a restrictive manner that would exclude structures that extend at a 90-degree angle from walls, and that the plain meaning should be given to the term, rather than limiting the term to corresponding structures disclosed in the patent’s specificati ...

Pharmaceutical Resources, Inc. v. Roxane Laboratories, Inc.
Brief

CitationPharm. Res., Inc. v. Roxane Labs., Inc., 253 Fed. Appx. 26, 2007 U.S. App. LEXIS 25906, 86 U.S.P.Q.2D (BNA) 1501 (Fed. Cir. Oct. 26, 2007) Brief Fact Summary. Par (Plaintiff) asserted broad claims in its patents ‘318 and ‘320, the generic version of the BMS Atzinger patent, related to stable flocculated suspension composition.  Plaintiff sued Roxane (Defendant) for infringement, and Defendant argued the claims were not valid due to a lack of enablement. Synopsis of Rule of Law. The specifications of a patent application must enable a person skilled in the art ...

Pfaff v. Wells Electronics, Inc.
Brief

CitationPfaff v. Wells Elecs, 525 U.S. 55, 119 S. Ct. 304, 142 L. Ed. 2d 261, 1998 U.S. LEXIS 7268, 48 U.S.P.Q.2D (BNA) 1641, 67 U.S.L.W. 4009, 98 Cal. Daily Op. Service 8319, 98 Daily Journal DAR 11535, 1998 Colo. J. C.A.R. 5775 (U.S. Nov. 10, 1998) Brief Fact Summary. Pfaff (Plaintiff) invented a computer chip socket and filed for a patent over a year after offering it for sale. Synopsis of Rule of Law. An invention that is the subject of a commercial offer for sale may not be patented a year after it was ready for patenting. ...

Orthokinetics, Inc. v. Safety Travel Chairs, Inc.
Brief

CitationOrthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1986 U.S. App. LEXIS 20410, 1 U.S.P.Q.2D (BNA) 1081 (Fed. Cir. Dec. 5, 1986) Brief Fact Summary. Orthokinetics’ (Plaintiff) claims on a wheelchair patent did not specify the sizes and types of automobiles which the wheelchair was to help in entering and exiting. Synopsis of Rule of Law. Under U.S.C. § 112, a claim is valid if a person skilled in the art would understand what is claimed when the claim is read in light of the specification.  ...

Ormco Corp v. Align Technology, Inc
Brief

CitationOrmco Corp. v. Align Tech., Inc., 463 F.3d 1299, 2006 U.S. App. LEXIS 22306, 79 U.S.P.Q.2D (BNA) 1931 (Fed. Cir. Aug. 30, 2006) Brief Fact Summary. Align Technology, Inc. (Plaintiff) sued Ormco Corp. (Defendant) for infringing on its patent ‘611 regarding orthodontic devices.  Plaintiff developed a series of retainer-like devices to straighten teeth.  Defendant argued the ‘611 claims would have been obvious and were therefore invalid due to prior art references of another orthodontist having developed a similar system without providing the devices ...

Oka v. Youssefyeh
Brief

CitationOka v. Youssefyeh, 849 F.2d 581, 1988 U.S. App. LEXIS 19527, 7 U.S.P.Q.2D (BNA) 1169 (Fed. Cir. Jan. 29, 1988) Brief Fact Summary. The same compound was invented by two parties; the first to file was Oka (Plaintiff), but Youssefyeh (Defendant) filed interference and claimed he invented it prior to Plaintiff’s filing. Synopsis of Rule of Law. Proof of conception and knowing the means of carrying out the conception and the exact date of conception is required of the junior party. ...

McElmurry v. Arkansas Power & Light Co.
Brief

CitationMcElmurry v. Ark. Power & Light Co., 995 F.2d 1576, 1993 U.S. App. LEXIS 14316, 27 U.S.P.Q.2D (BNA) 1129, 93 Daily Journal DAR 9240 (Fed. Cir. June 16, 1993) Brief Fact Summary. While working at AP & L (Defendant), Bowman invented a level detector, but the assignee of the patent, White River Technologies (Plaintiff), claimed that Defendant could not hire others to install the invention. Synopsis of Rule of Law. To determine whether an employer has “shop rights” to patented subject matter, the circumstances as a whole must be considered and whether principles of e ...

Markman v. Westview Instruments, Inc.
Brief

CitationMarkman v. Westview Instruments, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577, 1996 U.S. LEXIS 2804, 38 U.S.P.Q.2D (BNA) 1461, 64 U.S.L.W. 4263, 96 Cal. Daily Op. Service 2788, 96 Daily Journal DAR 4642, 9 Fla. L. Weekly Fed. S 540 (U.S. Apr. 23, 1996) Brief Fact Summary. Markman (Plaintiff) claimed that Westview (Defendant) had infringed upon his patent for a device to monitor inventory in dry-cleaning establishments. Synopsis of Rule of Law. The construction of a patent, including terms of art within its claim, is a matter to be decided by the court, not a jury. ...

Madey v. Duke University
Brief

CitationMadey v. Duke Univ., 307 F.3d 1351, 2002 U.S. App. LEXIS 20823, 64 U.S.P.Q.2D (BNA) 1737 (Fed. Cir. Oct. 3, 2002) Brief Fact Summary. Madey (Plaintiff) brought suit against Duke (Defendant) for patent infringement for using his lab equipment.  Defendant claimed its use fell within the experimental use exception. Synopsis of Rule of Law. The experimental use defense does not apply to use that is to further the user’s legitimate business and is not only for amusement, to satisfy idle curiosity, or strictly philosophical inquiry. ...

Lowell v. Lewis
Brief

CitationLowell v. Lewis, 15 F. Cas. 1018, 1817 U.S. App. LEXIS 169 (C.C.D. Mass. May 1, 1817) Brief Fact Summary. Lowell (Plaintiff) must prove his pump invention is useful. Synopsis of Rule of Law. The usefulness requirement of the Patent Act is satisfied if the invention is not frivolous or injurious to the well-being, good policy, or sound morals of society. ...

Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc.
Brief

CitationLab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124, 126 S. Ct. 2921, 165 L. Ed. 2d 399, 2006 U.S. LEXIS 4893, 79 U.S.P.Q.2D (BNA) 1065, 74 U.S.L.W. 4431, 19 Fla. L. Weekly Fed. S 311 (U.S. June 22, 2006) Brief Fact Summary. Metabolite Laboratories, Inc. (Plaintiff) licensed a patent for testing and correlating homocysteine and vitamin deficiency.  Laboratory Corporation of America Holdings (Defendant) used the tests and paid royalties for each use.  Abbott Labs then developed a test which Defendant sometimes used and did not pay Plaintiff royal ...

KSR International Co. v. Teleflex, Inc.
Brief

CitationKSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 167 L. Ed. 2d 705, 2007 U.S. LEXIS 4745, 82 U.S.P.Q.2D (BNA) 1385, 75 U.S.L.W. 4289, 20 Fla. L. Weekly Fed. S 248 (U.S. Apr. 30, 2007) Brief Fact Summary. Teleflex (Plaintiff) sued KSR (Defendant) for patent infringement based on an electronic sensor that was added to an existing pedal design by Defendant.  Defendant argued the Plaintiff’s patent claim was invalid because the addition was obvious. Synopsis of Rule of Law. In order to determine the obviousness of a patent claim, the courts must co ...

Kingsdown Medical Consultants, Ltd. v. Hollister, Inc.
Brief

CitationKingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 1988 U.S. App. LEXIS 17213, 9 U.S.P.Q.2D (BNA) 1384 (Fed. Cir. Dec. 21, 1988) Brief Fact Summary. Kingsdown (Plaintiff) mistakenly included a claim in its continuation application that had been rejected as indefinite in its original application.  Hollister (Defendant) was prevented by the included claim from marketing Defendant’s product and Defendant claimed inequitable conduct as a defense following the patent infringement suit by Plaintiff. Synopsis of Rule of Law. Failure to withdraw a patent ap ...

Johnson & Johnston Associates, Inc. v. R.E. Service, Co.
Brief

CitationJohnson & Johnston Assocs. v. R.E. Serv. Co., 285 F.3d 1046, 2002 U.S. App. LEXIS 5171, 62 U.S.P.Q.2D (BNA) 1225 (Fed. Cir. Mar. 28, 2002) Brief Fact Summary. Johnston (Plaintiff) brought suit against R.E. Service, Co., Inc. and Mark Frater (collectively, “RES”) (Defendant) for infringement.  Defendant argued that Plaintiff did not claim stell substrates, therefore this unclaimed subject matter was committed to the public. Synopsis of Rule of Law.  A patentee is not able to apply the doctrine of equivalents to cover unclaimed subject matter di ...

In re Wright
Brief

CitationIn re In re Wright, 102 Wn.2d 855, 690 P.2d 1134, 1984 Wash. LEXIS 1976 (Wash. Nov. 1, 1984) Brief Fact Summary. Wright discovered a vaccine for a chicken RNA virus and sought a patent that extended to other vaccines. Synopsis of Rule of Law. An application may be rejected as unsupported by an enabling disclosure which contains a general description and only one working example of processes, subject matter and methods of use. ...

In re Vogel
Brief

CitationIn re Vogel, 422 F.2d 438, 57 C.C.P.A. 920, 1970 CCPA LEXIS 423, 164 U.S.P.Q. (BNA) 619 (C.C.P.A. Mar. 5, 1970) Brief Fact Summary. The Patent Office Board of Appeals found that Vogel’s meat and beef processing claims double patented his earlier pork patent. Synopsis of Rule of Law. Analysis of double patenting requires determining if the same invention is being claimed twice, and if the claim is an obvious variation of the invention disclosed previously. ...

In re Translogic Technology, Inc
Brief

CitationIn re Translogic Tech., Inc., 504 F.3d 1249, 2007 U.S. App. LEXIS 23969, 84 U.S.P.Q.2D (BNA) 1929 (Fed. Cir. Oct. 12, 2007) Brief Fact Summary. Translogic Technology, Inc. (Plaintiff) applied for and received a patent related to multiplexers, the ‘666 patent.  The United States Patent and Trademark Office’s Board of Patent Appeals and Interferences (the Board) reexamined patent ‘666 and rejected particular claims of patent ‘666 as obvious due to prior art references.  The particular prior references were a technical article and a textb ...