Category Archives: Remedies

Claim Term Given Plain Meaning Absent Clear Disclaimer or Disavowal

Author: Christopher B. McKinley
Editor: Jeff T. Watson

In Luminara Worldwide, LLC v. Liown Electronics Co., No. 15-1671 (Fed. Cir. Feb. 29, 2016), the Federal Circuit vacated a preliminary injunction because there was substantial question as to whether the asserted claim was anticipated by the prior art.

Luminara sued Liown for infringing its patent covering flameless, light-flickering candles. Luminara moved for a preliminary injunction to bar Liown from making, using, or selling its own artificial candles. The district court found no substantial question of validity that would challenge Luminara’s likelihood of success and granted the injunction. In reaching its decision, the district court, based on embodiments shown in the specification, construed “free to pivot” to mean a moving body having four degrees of freedom, thereby distinguishing the claim over the closest prior art reference, which disclosed a body that moves in only two ways.

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Federal Circuit Affirms Inequitable Conduct for Withholding Evidence and Failing to Correct Representations to PTO

Author: Kristi L. McIntyre
Editor: Lauren J. Dreyer

In Ohio Willow Wood v. Alps South, Nos. 2015-1132, -1133 (Fed. Cir. Feb. 19, 2016), the Federal Circuit affirmed a finding of inequitable conduct.

OWW asserted infringement against Alps South, who sought reexamination of the claims. Appealing a rejection from the reexamination, OWW argued before the Board that certain testimony the examiner relied upon in making his rejection was uncorroborated. The Board agreed, reversing the examiner’s rejection and explaining that the examiner erred in crediting uncorroborated testimony, and the claims were confirmed.

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Courts Must Apply Phillips  Standard to Determine Claim Scope for Intervening Rights Inquiry

Author: W. Caroline Chen, Ph.D.
Editor: Jeff T. Watson

In Convolve, Inc. v. Compaq Computer Corp., No. 14-1732 (Fed. Cir. Feb. 10, 2016), the Federal Circuit reversed the district court’s grant of summary judgment of noninfringement based on its determination that liability was precluded by intervening rights.

Convolve filed suit against Seagate and Compaq in 2000, alleging, among other things, infringement of U.S. Patent No. 6,314,473. While the litigation was pending, the 473 patent underwent reexamination. During reexamination, the patentee added the word “seek” in front of “acoustic noise” in the claims in response to a prior-art rejection. On remand from a prior appeal to the Federal Circuit, the district court adopted the examiner’s finding that the “acoustic noise” was not limited to “seek acoustic noise” and held that patent infringement liability was precluded by intervening rights arising from the substantive amendment to the claims.

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