Court of Appeals for the Federal Circuit

The Court of Appeals for the Federal Circuit. As you may have noticed, much of the quoted case law in this text reference opinions from the Court of Appeals of... 

With the blossoming of biotechnology in the 1980s and, more recently, of genomics, a whole new speciality in patent law has developed. In general, it is viewed that the principles of chemical patent practice apply equally to the biotechnology field. The Court of Appeals for the Federal Circuit (which is the U.S. Federal Court that hears all patent appeals from the Patent and Trademark Office and any Federal District Courts) has affirmed this in their decisions. Biotechnology inventions must satisfy the standard statutory... 

The United States Court of Appeals for the Federal Circuit subsequently upheld the decision of the District Court with respect to both issues of literal infringement and infringement under the doctrine of equivalents. With regard to the issue of literal infringement, the Court of Appeals reasoned that for a product to literally infringe a patent claim, the product in question must contain each limitation of the asserted claim. In other words, the accused product must contain each element of the patented composition to constitute... 

Against this factual background of the threepronged test and secondary considerations (if any), the obviousness or nonobviousness of the invention is determined. The decision maker must step back in time and determine whether a person of ordinary skill would have found the invention as a whole obvious at the time the invention was made. The Court of Appeals for the Federal Circuit has offered the following guidelines for this determination ... 

Composition of Matter Ciaims. Prior art compounds that are structurally similar to the claimed compound or drug may render the claimed compound obvious and therefore unpatentable. But [a]n assumed similarity based on a comparison of formulae must give way to evidence that the assumption is erroneous" (128). Recently, the Court of Appeals for the Federal Circuit reaffirmed this standard for prima facie obviousness as applied to composition of matter claims ... 

If the applicant is not successful in overcoming the examiner s rejections and the examiner makes the rejections final, several options remain. Again the applicant may simply abandon the application and, if the application has not been and will not be published, retain the invention as a trade secret. Or, the applicant can refile the application as a divisional, continuation, or continuation-in-part application and continue prosecution in the PTO. The applicant may also appeal the examiner s rejection to the Board of Patent Appeals and Interferences within PTO. If not satisfied with the Board s decision, the applicant may appeal that decision either to the Court of Appeals for the Federal Circuit based on the record before the PTO or to a federal district court for a de novo review. If the examiner s position is overturned, the Federal Circuit or the district court can order the PTO to issue the patent. Appeal to either the Federal Circuit or a federal district court destroys the secrecy of the application as well as that of the record of the proceedings within the PTO and thus destroys any trade secrets that may have been contained therein. 

The 94 federal judicial districts are organized into 12 regional circuits, each of which has its own court of appeals. With the Federal Courts Improvement Act ("FCIA") of 1982 (167), the U.S. Congress created the Court of Appeals for the Federal Circuit and vested it with exclusive jurisdiction over patent cases. One of its objectives in doing so was to promote uniformity in the area of patent law and diminish the uncertainty created by inconsistent application of the patent law among the regional circuits (168). The Federal Circuit also hears appeals of patent matters from the PTO, the Court of Federal Claims, and the ITC, as well as appeals of a variety of nonpatent matters. Matters involving issues of patent law make up a substantial portion of the Court s docket, and the Court is considered to have specialized expertise in the patent area. 

In Rite-Hite v. Kelley (203), the Court of Appeals for the Federal Circuit held that lost profits on unpatented products that directly compete with the infringing product are recoverable if the lost sales were reasonably foreseeable. The patentee in Rite-Hite made a product covered by its patent and a higher priced unit that was not covered. The allegedly infringing product was intended to compete with the unpatented unit. The Federal Circuit held that the patentee was entitled to recover profits it lost on diverted sales of the unpatented unit as compensationforthe infringement. 

Either party may appeal to the Court of Appeals for the Federal Circuit. 

Recently the Court of Appeals for the Federal Circuit ruled that when a claim limitation is narrowed during prosecution, application of the doctrine of equivalents to that claim element is completely barred. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234. 3d 558 (Fed. Cir. 1999), vacated and remanded, 122 S. Ct. 1831 (2002). Although the... 

See Tenth Annual Judieial Conferenee of the United States Court of Appeals for the Federal Circuit, 146 F.R.D. 205, 372 (1992) [Judge Cohen (E. D. Mich.)] ("[Tlhere s an underappreciation of the general lack of experience of district judges [regarding patent matters]. . . [D]istrict judges have to constantly learn and re-learn patent law. They simply cannot keep current with developments in the law."). 

The deposit must be made no later than the effective filing date of the application to satisfy the requirements of Section 112. Ex Parte Lundack, (Unreported Board of Appeals decision dated August 21, 1984 Appeal heard at CAFC on May 10, 1985). (Subsequent to this presentation. In re Lundak was decided by the Court of Appeals for the Federal Circuit on... 

A) IN GENERAL—Any party aggrieved by a final order under paragraph (2) may petition for review by the United States Court of Appeals for the Federal Circuit. 

Cases under Theory 1 In February 2009, special masters of the US Court of Federal Claims ruled in favor of the United States Department of Health and Human Services (HHS) on general causation and three test cases under this theory. All three test cases were appealed to judges of the CFC and all three were affirmed in July and August, 2009. Two of the three test cases, Hazlehurst and Cedillo, were then appealed to the Federal Circuit On 13 May 2010, the US Court of Appeals for the Federal Circuit released its decision in Hazlehurst. The Federal Circuit affirmed the decision of the HHS. The Hazlehurst family may next seek review by the Supreme Court. On 27 August 2010 the US Court of Appeals to the Federal Circuit affirmed the denial of Cedillo s petition for compensation. 

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