Author Archives: Robert Yeh

District Court Finds Qui Tam Provision in Patent False Marking Law Unconstitutional: Unique Product Solutions v. Hy-Grade Valve

35 U.S.C. § 292 is known as the Patent False Marking Statute and contains two subsections.  Subsection (a) says that it is unlawful, without the consent of the patentee, “to mark a product with, or use in advertising, a patent number … Continue reading

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Tokai v. Easton: Deference to the PTO and Hindsight Bias in Obviousness Analysis

The recent Tokai v. Easton opinion (PDF) raises a timely standard of review issue that the Supreme Court will soon consider in Microsoft v. i4i, and highlights the danger of hindsight bias in an obviousness analysis. The timely issue here regards … Continue reading

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Finjan v. Secure Computing: Direct Infringement of Apparatus Claims by Software That Requires User Unlocking or Activation

In the recent Finjan v. Secure Computing decision, the Federal Circuit affirmed that software that is sold in locked or inactivated form can directly infringe apparatus claims even before the customer unlocks or activates the software in separate subsequent steps. … Continue reading

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First Invented in a Foreign Country and Later “Invented” Again “in this Country:” Solvay v. Honeywell on 35 U.S.C. 102(g)(2)

In the recent Solvay v. Honeywell (PDF) decision, the Federal Circuit dealt with the issue of who qualifies as a prior inventor for the purpose of 35 U.S.C. § 102(g)(2).  In particular, this case concerns an invention that was invented … Continue reading

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Solicitor General Files Brief in Stanford v. Roche

On September 28, 2010, the Solicitor General (SG) filed a brief explaining the views of the United States in the pending appeal of Stanford v. Roche, 583 F.3d 832 (Fed. Cir. 2009) (PDF).  The SG’s brief argues strongly in Stanford’s favor, … Continue reading

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Goeddel v. Sugano – Disclosure that Allows a PHOSITA to “Envision” an Invention Fails the Written Description Requirement

The recent decision in Goeddel v. Sugano concerns an appeal from an interference proceeding.  Although these types of cases may be a “dying breed” if patent reform goes through (as discussed in this PLI Patent Law Practice Center post), this … Continue reading

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