February 2008 – Click for full issue

• En banc hearing on patentability of business methods and processes with only abstract or mental steps
• Paying royalties under protest did not support licensee estoppel to preclude declaratory judgment validity challenge
• Courts should consider convenience factors when deciding if the first-to-file rule applies
• No actual case or controversy triggered by providing notice letter of the issuance of a patent without any comment on infringement
• Attorney fees and penalty assessed for presenting misleading arguments to the jury that sought to avoid adjudicated claim construction
• 12-year delay in seeking a certificate of correction did not support intervening rights, prosecution laches, patent misuse, waiver, or implied license, but could support traditional laches and equitable estoppel
• Ordinary function performed by claim term used to construe structural requirements
• Failing to enable alternative embodiment led to summary judgment of invalidity
• Two Federal Circuit cases on amendment-based estoppel
• Implicit motivation to combine raised a substantial question on validity to preclude preliminary injunction
• Offering “production units precludes experimental-use to avoid an on-sale bar
• Witnesses may be cross examined on whether they worked with a jury consultant
• USPTO proposes changes to rules regarding the deposit of biological materials
• PTO’s report to congressional oversight committee

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