Decisions In IP Matters, Plus Denial of Administrative Refund Claim - Federal Circuit
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Decisions In IP Matters, Plus Denial of Administrative Refund Claim

Optimum Corp. v. Emcore Corp., No. 09-1265, concerned a patent infringement suit related to methods for improvements in an optical communication system.  In affirming the grant of defendant's motion for summary judgmentthe court held that the defendant did not commit inequitable conduct in obtaining the patents in suit, and thus the the district court correctly ruled that, on plaintiff's version of the facts, it had offered no evidence that could succeed on proving deceptive intent by clear and convincing evidence. 

Robertson v. Timmermans, No. 09-1222, concerned a challenge to the Board's denial of plaintiff's preliminary motions in an interference proceeding before the Board of Patent Appeals and Interferences relating to patents for light-emitting diode replacement tubes for fluorescent light tubes, claiming that defendant's copied claims were unpatentable for lack of written description support as required by 35 U.S.C. section 112.  

However, because the Board erred in construing defendant's claims in view of defendant's disclosure rather than plaintiff's closure, as Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009) held that when a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language, and as such, the Board's denial is vacated. 

In Prati v. US, No. 08-5117, the court faced a challenge to the Court of Federal Claims' dismissal of the claims  in taxpayers' action for administrative refund claims with the IRS, arising from the IRS' investigation and subsequent issuance of Notices of Final Partnership Administrative Adjustment, relating to a number of limited partnerships managed by a corporation that promoted tax shelter partnerships during the 1980s.

In affirming the Court of Federal Claims' decision, the court held that the statute of limitations issue is a partnership item and the taxpayers were required to raise the limitations issue in the partnership-level proceeding prior to either entering settlement or stipulating to judgment in the Tax Court.  Furthermore, because taxpayers' challenge to the penalty interest assessments is inherently a dispute over the proper characterization of the partnerships' transactions, this is barred by section 7422(h) from being litigated in the refund action before the Court of Federal Claims.     

Rolls-Royce, PLC v. United Tech., Corp., No. 09-1307, concerned a patent interference proceeding, relating to swept fan blades used on turbofan jet engines.  The district court's reversal of the Board's judgment against Rolls-Royce is affirmed as the claims of Rolls-Royce's '077 patent are patentable over defendant's '931 application because the '931 application does not render the '077 patent obvious.     

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