R&H’s Processes for Preparing Emulsion Polymers with Improved Opacity Not Invalid over the Prior Art that Does Not Include a “Swelling Agent” Narrowly Construed by the PTAB

ORGANIK KIMYA AS v. ROHM AND HAAS COMPANY: October 11, 2017. Before Prost, Newman, and Taranto.   Takeaway: Where a patent specification uses the word ‘include’ immediately followed by the phrase ‘are those which,’ the element is properly limited to the embodiments “which exhibit the functional characteristics thereafter described.” Procedural …

The Seventh Amendment Right to a Jury Trial Does Not Apply to Requests for Attorney’s Fees Under § 285 of the Patent Act

AIA AMERICA v. AVID RADIOPHARMACEUTICALS:  August 10, 2017.  Before Newman, Lourie, and Hughes.   Takeaway: The Seventh Amendment right to a jury trial does not apply to requests for attorney’s fees under § 285 of the Patent Act. The district court did not err by making factual findings not foreclosed by …

Decision on Attorney’s Fees Vacated and Remanded Because the District Court Used an Incorrect Standard and Made Multiple Errors

ROMAG FASTENERS v. FOSSIL:  August 9, 2017.  Before Newman (concurring-in-part, dissenting-in-part), Dyk (majority), and Hughes.   Takeaway: The Lanham Act should have the same standard for recovering attorney’s fees as the Patent Act in light of Octane. In determining whether a case is exceptional for 35 U.S.C. § 285 fees, a district court …

Non-Profit Organization Appellee Described as Representing the Public Interest Not Excluded from Appearing in Court to Defend a PTAB Decision

PERSONAL AUDIO v. ELECTRONIC FRONTIER FOUNDATION: August 7, 2017.  Before Newman, Clevenger, and O’Malley   Takeaway: A non-profit organization appellee described as representing the public interest is not excluded from appearing in court to defend a PTAB decision in view of the Consumer Watchdog decision with the appellant satisfying the …

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 …