August 2007 (Part II) – Click for full issue

• PTO announces its final rules on continuation applications and examining claims
• Patentee’s failure to produce a fully automated computer-aided design system as claimed showed lack of an enabling disclosure (CAFC)
• Points of novelty for design patents may lie in combinations that are a non-trivial advance over the art (CAFC)
• District court’s claim construction order not binding on PTO during reexamination (CAFC)
• State-law fraud claim required jury to determine issues of conception for later use in § 256 correction of inventorship claim (CAFC)
• Foreign priority applied where foreign application had § 112 support for a species within the scope of the count (CAFC)
• PTO must meaningfully consider applicant’s rebuttal evidence before finalizing an obviousness rejection (CAFC)
• Patentee’s lost-profits claim negated its contention that its patent was not “essential” to an industry standard (D.Del.)
• Pioneer drug manufacturer’s settlement with generic manufacturers mooted re-seller’s declaratory judgment claim (S.D.N.Y.)
• Notice under § 287 from filing complaint measured from filing date, not service date (N.D. Ill.)
• One month delay in seeking leave to amend failed to show diligence (E.D.Tex.)

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