Federal Circuit Lets Patent Office Use Prosecution Laches Against Prolific Filer Hyatt

The Federal Circuit recently ruled in favor of the Patent Office asserting the rarely used doctrine of prosecution laches against serial patent applicant Gil Hyatt. Hyatt had brought an action in district court to order the Patent… Read More

35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S.… Read More

An Inventor Must Be a Natural Person, Not a Machine

The Bicentennial Man is out of luck.* The Patent Office recently issued a ruling that only a human can be an inventor. The application at issue listed “DABUS” as the sole inventor. DABUS is a collection of neural nets designed… Read More

Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

In William Grecia v. Samsung Electronics (Fed. Cir. 2019) the Federal Circuit affirmed a finding of invalidity for U.S. Patent 8,533,860 (the ‘860 patent) under 35 U.S.C. § 112, ¶2 (indefinite). The invalidly determination for… Read More

Written Description Required to Claim Priority from a PCT

The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir.… Read More