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CAFC Weekly: April 23, 2010

by Orlando Lopez

Every week we review all the opinions of the CAFC for that week. After the week of April 16, in which the CAFC had seven precedential opinions, we are thankful for a week with only three precedential opinions – one relating to interpretation of terms during prosecution and two on procedural matters.

In Harari v. Hollmer, a case arising from an interference, the CAFC explains the standard for determining whether the language in an incorporation by reference is sufficient to be effective. Incorporation by reference is a legal technique in which the contents of a document are brought into another document. The CAFC states that the standard is whether a reasonable examiner would find the identity of the incorporation by reference to be clear in light of the documents presented.

In Gillig v. Nike, a case having both trade secret and inventorship issues, the court opined on whether the inventorship claim is barred due to res judicata, that is, whether the issue had already been adjudicated at a prior proceeding. The Court finds that at least some of the inventorship issues arise from a different nucleus of facts and are not barred due to res judicata.

In ClearPlay, Inc. v. Nissim, a case involving Nissim’s patent license granted to ClearPlay, the issue is whether the CAFC has jurisdiction to hear the case. The Court finds that, using the test provided by the Supreme Court decision in Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988), the actions in the complaint do not arise under patent law, and, therefore, the CAFC does not have jurisdiction.

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