Category Archives: Inequitable Conduct

Failure to disclose pre-critical date offer for sale was inequitable conduct, DC decision affirmed

GS Cleantech, Cantor Colburn LLP v. Adkins Energy LLC, Big River Resources et al. Docket No. 2016-2231, -1838, 2017-1832 REYNA, WALLACH, HUGHES March 2, 2020 Brief Summary: DC finding of inequitable conduct for failure to disclose pre-critical date offer for … Continue reading

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Mark A. Barry v. Medtronic, Inc.

Docket No. 2017-2463 PROST, MOORE, TARANTO January 24, 2019 Brief summary: DC and jury conclusions of no invalidity and infringement affirmed (e.g., the invention was not in “public use” as the use was experimental, no § 102(b) on-sale bar, no … Continue reading

Posted in Anticipation (35 USC 102), Conception and Reduction to Practice, Experimental Use, Inducement to Infringe, Inequitable Conduct, Infringement, Preamble, Public Use | Tagged | Leave a comment

Core Wireless Licensing S.A.R.L. v. Apple Inc.

Docket No. 2017-2102 REYNA, BRYSON, HUGHES August 16, 2018 Brief summary: Jury finding of infringement and no invalidity of CW’s ‘151 claim affirmed but “implied waiver” / unenforceability arguments remanded; finding of infringement of ‘536 claim reversed. Summary: Apple appealed … Continue reading

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In re: Rembrandt Technologies LP et al. v. Comcast et al.

Docket No. 2017-1784 O’MALLEY, MAYER, REYNA August 15, 2018 Brief summary: DC finding this litigation exceptional under § 285 affirmed; $51 million fee award vacated and remanded as the DC “awarded all fee fees with no explanation whatsoever of a..causal … Continue reading

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Everlight Electronics Co., Ltd. et al. v. Nichia Corporation et al.

Docket Nos. 2016-1577, -1611 WALLACH, CHEN, HUGHES January 5, 2018 Non-precedential Brief summary: DC finding that jury obviousness determination was supported by substantial evidence and its conclusion that the requisite intent for inequitable conduct affirmed. Summary: Everlight brought DJ suit … Continue reading

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Regeneron Pharmaceuticals, Inc. v. Merus N.V.

Docket No. 2016-1346 PROST, NEWMAN, WALLACH July 27, 2017 Update (Dec. 26, 2017): Petition for rehearing en banc denied; Judges Newman and Reyna dissented, concerned that under this decision “inequitable conduct in patent prosecution can be retrospectively imposed by ‘adverse … Continue reading

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Intercontinental Great Brands LLC (“Kraft”) v. Kellogg North America Co. et al.

2016-2082, -2084 PROST, REYNA (D), TARANTO September 7, 2017 Brief summary: DC grant of SJ for obviousness and no inequitable conduct affirmed. Summary: Kraft appealed grant of SJ to Kellogg of invalidity for obviousness of the asserted claims of Kraft’s … Continue reading

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Regeneron Pharmaceuticals, Inc. v. Merus N.V.

Docket No. 2016-1346 PROST, NEWMAN, WALLACH July 27, 2017 Brief summary: DC finding of inequitable conduct based on “adverse inference of specific intent to deceive the PTO”, perhaps due in part to litigation misconduct, affirmed. Summary: Regneron appealed DC holding … Continue reading

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U.S. Water Services, Inc., Roy Johnson v. Novozymes A/S et al.

Docket No. 2015-1950, -1967 WALLACH, HUGHES, STOLL December 15, 2016 Brief Summary: DC grant of SJ for invalidity (inherent anticipation) reversed; grant of SJ of no inequitable conduct affirmed. Summary: U.S. Water (USW) appealed DC grant of SJ to Novozymes … Continue reading

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The Ohio Willow Wood Company v. Alps South, LLC

Docket No. 2015-1132, -1133 NEWMAN, CHEN, HUGHES February 19, 2016 Brief Summary: DC finding of inequitable conduct affirmed. Summary: This appeal follows an earlier decision remanding part of the case against Alps for trial (Ohio Willow Wood, FC 2013). OWW’s … Continue reading

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