Enablement from a Provisional Application Must Be Supported by the Disclosure and Not Require Undue Experimentation by a Person Having Ordinary Skill in the Art

STORER v. CLARK: June 21, 2017.  Before Prost, Newman, and Dyk.   Takeaway: In order for a non-provisional patent application to be enabled by the provisional patent application from which it takes priority, the disclosure in the provisional patent application must enable one having ordinary skill to produce the claimed …

Contacts with a Forum State that Occurred Prior to the Issuance of a Patent are Not Sufficient to Confer Personal Jurisdiction for a Patent Infringement Case

NEXLEARN, LLC, v. ALLEN INTERACTIONS, INC.: June 19, 2017.  Before Moore, Schall, and Hughes   Takeaway: A defendant’s contacts with a forum state that occurred prior to the issuance of a patent are not sufficient to confer specific personal jurisdiction for a patent infringement case after the patent issues. Absent any …

Federal Circuit Upholds Injunction and Comments Upon the Appropriate Test for Infringement Under the Doctrine of Equivalents in Chemical Cases

MYLAN INSTITUTIONAL LLC v. AUROBINDO PHARMA LTD:  May 19, 2017. Before Lourie, Moore and Reyna.   Takeaway: CAFC ruled the district court did not err in granting preliminary injunction because the district court correctly determined defendant was unlikely to prove invalidity of one patent-in-suit, even though the district court did err …

The District Court Properly Exercised Subject Matter Jurisdiction and Granted Summary Judgment Notwithstanding the Plaintiff’s Execution of a Covenant not to Sue that Appeared to be Unconditional

ARCELORMITTAL V. AK STEEL CORP.:  May 16, 2017. Before Hughes (majority), Wallach (dissent), and Moore.   Takeaway: CAFC affirmed the district court’s ruling that it had the subject matter jurisdiction necessary to deny plaintiff’s motion to dismiss and grant summary judgment of invalidity. CAFC found that a facially unconditional covenant not …

Octane Fitness Does Not Provide a Set Formula For Determining Whether to Grant Attorney Fees.

UNIV. OF UTAH v. MAX-PLANCK-GESELLSCHAFT: March 23, 2017. Before O’Malley, Reyna, Wallach. Takeaway: Octane Fitness does not provide a precise framework for a finding that a case is exceptional and warrants an award of fees, only several suggestions that might guide a district court’s discretionary decision. In ruling on a …