• INTELLECTUAL PROPERTY LAW

United States Federal Circuit

Gilbert P. Hyatt, v. David Kappos, Director, Patent and Trademark Office (Decided on 08.11.2010)

Civil action against the Director of the Patent Office- Pursuant to 35 U.S.C. section 145, related to a patent application for a computerized display system for processing image information.- District Court's grant of summary judgment in favor of the Director vacated and remanded- What limitations exist on an Applicant's right to introduce new evidence in a § 145 civil action.

Held, that section 145 imposed that there should be no limitation on an Applicant's right to introduce new evidence before the District court, apart from the evidentiary limitations applicable to all civil actions contained in the Federal Rules of Evidence and Federal Rules of Civil Procedure and as such, the District Court abused its discretion when it excluded Petitioner's declaration under the wrong legal standard.

Abraxis Bioscience Inc.v. Navinta LLC (Decided on 09.11.2010)

Suit for infringement -Patents related to methods of using low concentrations of Ropi vacaine Hydrochloride to treat pain- whether a patent assignment clause created an automatic assignment or merely an obligation to assign was intimately bound up with the question of standing in patent cases -Held, District Court's finding that Defendant's Abbreviated New Drug Application (ANDA) product would directly infringe and contribute and induce infringement. District Court erred in failing to dismiss Plaintiff's action for lack of standing and certain claims of Plaintiff's patents was vacated remanded. Because without the transfer of legal title of the patents the Plaintiff had no standing to bring this infringement action.

A123 Systems, Inc. v. HYDRO-QUEBEC (Decided on 10.11.2010) 

Suit for declaration of non-infringement- There was an invalidity of two patents related to a genus of lithium based cathode materials. District court denied Plaintiff's motion to reopen and dismissed the declaratory judgment action -1) Whether UT was a necessary party to A123's declaratory judgment suit?

Held, District court's decision be affirmed by denying A123's motion to reopen and dismissing A123's declaratory judgment suit because the Defendant had acquired less than all substantial rights in the patents in suit, University of Texas (UT) is a necessary party to plaintiff's declaratory judgment action.

2) Whether UT could join in a waiver of immunity of Eleventh Amendment immunity in the Massachusetts District Court?

Held, UT's waiver of Eleventh Amendment immunity in a patent infringement suit in the Northern District of Texas did not result in a waiver of immunity in this separate infringement action, and absent such a waiver, UT cannot be joined. Here three of the four Rule 19(b) factors weigh in favor of holding UT to be an indispensable party, UT was not only a necessary party, but also and indispensable party, making dismissal appropriate.

Nuance Communications, Inc. v. Abby Software House (Decided on 12.11.2010)

Suit for infringement- Patent related to methods and systems for performed optical character recognition, recognizing documents, and managing documents, district court's judgment is reversed in part, vacated in part and remanded where: 1) District court's dismissal of Defendant-Abby Production for lack of personal jurisdiction is reversed because Defendant purposefully directed activities at residents of California, because Plaintiff's claims for patent infringement arise out of those activities, and because the assertion of personal jurisdiction is reasonable and fair; 2) District court's dismissal of Defendant Abby Software is vacated and remanded as the record calls for further discovery on the jurisdiction questions; and 3) District Court erred in dismissing the defendants for improper service of process.