PLI Publishes 2009 Federal Circuit Yearbook

Each year, the Federal Circuit Yearbook provides a concise, comprehensive review of every patent decision published by the U.S. Court of Appeals for the Federal Circuit during the preceding year. The 2009 Federal Circuit Yearbook is now available, and includes all the information you need to catch up with what the Federal Circuit has been doing over the previous year.  Covering everything from utility to claim construction, nonobviousness to infringement, inequitable conduct to inventorship, the Yearbook brings you readable summaries packed with authoritative commentary on the CAFC’s legal analysis and its current thinking on pivotal patent concerns.  The 2009 Federal Circuit Yearbook is also available on Kindle.

Cases summarized in the Yearbook include the following, among many others:

  • Utility and Inventions Patentable: The machine-or-transformation test: A claimed process is patent-eligible under section 101 if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. (See In re Bilski, discussed at § 1:1.)
  • Novelty and Statutory Bars: Finding a lack of obviousness does not preclude a finding of anticipation. (See Cohesive Technologies, Inc. v. Waters Corp., discussed at § 2:3.)
  • Nonobviousness: Where a claimed range overlaps with a range disclosed in the prior art, there is a presumption of obviousness which may be rebutted by showing that the prior art teaches away from the claimed invention or that the invention achieves unexpected results: Such a rebuttal requires an explanation. (See Ricoh Co. v. Quanta Computer Inc., discussed at § 3:11.)
  • Specification and Claims: A patentee’s mere use of a term with an antecedent does not require that both terms have the same meaning despite the court’s holding in Process Control: differing “surrounding language” may result in different meanings. (See Microprocessor Enhancement corp. v. Texas Instruments Inc., discussed at § 4:7.)
  • Claim Construction: Specification referring to “the present invention” in connection with kiosk embodiment limits “remote interface” and excludes a consumer’s personal computer system. (See, Inc. v. Federated Department Stores, Inc., discussed at § 6:8.)
  • Infringement: An opinion of counsel remains important in deciding the “intent” element of induced infringement. Failure to obtain an opinion of counsel may be directly probative of such intent. Evidence of inducement may be shown by circumstantial evidence. (See Broadcom Corp. v. Qualcomm Inc., discussed at § 7:2.)
  • Prosecution History Estoppel: That a competitor developed an accused equivalent ten years after the narrowing amendments does not preclude finding that the equivalent was “foreseeable.” (See Honeywell International, Inc. v. Hamilton Sundstrand Corp. (Honeywell IV), discussed at § 8:1.)
  • Inequitable Conduct: Characterizing a reference listed on an European Patent Office search report in a prior art statement as unrelated to the invention, even though the EPO had rejected claims based on that reference, constitutes attorney argument and does not constitute inequitable conduct. (See Innogenetics, N.V. v. Abbott Laboratories, discussed at § 9:4.)
  • Remedies: An award of attorney’s fees may be based on “benign” inequitable conduct that does not necessarily impact patentability. (See Nilssen v. Osram Sylvania, Inc. (Nilssen II), discussed at § 10:18.)
  • PTO Practice and Procedure: PTO’s interpretation of inter partes reexamination statute is entitled to Chevron deference: inter partes reexamination applies to patents issuing from applications filed on or after November 29, 1999, even though based on earlier filed parent applications. (See Cooper Technologies Co. v. Dudas, discussed at § 11:1.)
  • District Court Jurisdiction and Procedure: As a matter of first impression, whether a party is entitled to a jury trial on disputed jurisdictional issues of standing depends on how intertwined jurisdictional facts are with substantive facts underlying the claim, and in patent cases will be decided under Federal Circuit law. (See DDB Technologies, L.L.C. v. MLB Advanced Media, L.P., discussed at § 12:7.)
  • Appellate Court Jurisdiction and Practice: A court order dismissing an “action” does not necessarily dispose of all claims and thus does not necessarily constitute a final judgment. (See iLOR, LLC v. Google, Inc., discussed at § 13:3.)
  • Ownership Agreements and Inventorship: The doctrine of laches applies to claims of inventorship. Delaying eight years to file suit constituted laches. See Serdarevic v. Advanced Medical Optics, Inc., discussed at § 14:2.)
  • Design Patents: “Point of novelty” test is no longer to be used in deciding design patent infringement. The “ordinary observer” test is the sole test for determining design patent infringement. (See Egyptian Goddess, Inc. v. Swisa, Inc., discussed at § 15:1.)
  • Miscellaneous: Whether there is a duty to disclose intellectual property rights to a standards-setting organization requires first determining whether the language of a written policy expressly requires such disclosure, and second, if not, whether the members of nevertheless treated the language of the policy as imposing a duty of disclosure. (See Qualcomm Inc. v. Broadcom Corp., discussed at § 16:4.)


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

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