Here’s the latest.

Full Federal Circuit Won’t Revisit Dana-Farber on Named Inventors

Reported by Perry Cooper at Bloomberg Law

The Federal Circuit issued a denial of a petition for an en banc rehearing in Dana-Farber Cancer Institute v. Ono Pharmaceuticals Co. Perry Cooper summarizes the impact of allowing the Federal Circuit’s decision in July to stand. The Federal Circuit determined that two researchers should be listed as co-inventors which allows the researchers’ employer to license the patented technology. The original patent owner, a Nobel Prize winner, argued that adding the researchers would increase claims of joint inventorship despite working on separate material.

“This will chill cooperation across laboratories and invite future litigation,” [the patent owners] said. The decision also “eliminates an important safeguard against an unending chain of purported co-inventors laying claim to patent rights that turn out to be valuable.”

For more information, see our coverage.

CAFC Affirms District Court Dismissal of Declaratory Judgment Under Doctrine of ‘Abstention’

Reported by IPWatchdog

IP Watchdog recaps a recent decision issued by the Federal Circuit in Warsaw Orthopedic, Inc. v. Sasso regarding the dismissal of a claim for declaratory judgment. The patent owner filed suit in state court alleging a breach of a licensing contract for two of his patents by Medtronic. While the state action was on appeal, Medtronic filed a declaratory judgment action in federal court. The district court dismissed the case on the grounds of the Wilton/Brillhart abstention doctrine where courts have the discretion to dismiss declaratory judgment claims. The Federal Circuit determined that the preexisting state action was sufficient for the district court to dismiss the case on abstention grounds.

The CAFC explained that the precedent illustrated that many different circumstances may arise whereby discretion is exercised on various facts, including “whether preclusion should be afforded to a state court’s ruling on an aspect otherwise properly before the federal court.”

For more information, see our coverage.

Broadest Reasonable Interpretation in Light of the Specification

Reported by Professor Dennis Crouch at Patently-O

Snyders Heart Valve can continue its infringement claims against St. Jude’s Medical after a recent decision by the Federal Circuit. Professor Dennis Crouch reviews the opinion in St. Jude Medical, LLC v. Snyders Heart Valve LLC. The Federal Circuit reversed a PTAB decision invalidating certain claims of a patent based on anticipation by prior art. The PTAB construed a claim in the patent broadly but did not include a nonexplicit aspect of the invention within the construction. This construction precipitated the PTAB’s finding of anticipation. However, the specification did teach this aspect of the invention.

The specification actually particularly references [the prior art] as problematic prior art that requires “removal of the native valve, cardiopulmonary bypass and backflushing of the coronary arterial tree.” Snyders explains that its approach avoids those major procedures.

As a result, the Federal Circuit overruled the PTAB’s construction because the specification could be read into the claim as part of the broadest reasonable interpretation.

For more information, see our coverage.