March 2008 – Click for full issue

• Corresponding structure of a microprocessor having “appropriate programming” was indefinite for not disclosing the algorithm performed by the microprocessor
• Safe-harbor provision of § 271(e)(1) applies to ITC proceedings
• Protection from obviousness-type double patenting challenges afforded by § 121 does not apply to patents issuing from CIP applications
• Statements disavowed claim scope even though examiner may not have relied upon them
• Festo tangential-related exception not shown by fact that equivalent and claim limitation both perform a function not done by the prior art
• Federal Circuit reverses denial of JMOL for obviousness
• Obvious-to-try argument rejected by Federal Circuit as being an improper hindsight analysis
• Certificate of Correction correcting named inventorship has retroactive effect
• Holder of a security interest in a patent is not a necessary party to an infringement suit
• Statement in invalidity opposition brief that patentee would not assert challenged claim in any future litigation mooted controversy as to that claim
• Patent ownership may pass by operation of law such as intestate succession without a formal written assignment
• Court refuses to stay discovery on opinions of counsel until patentee makes a showing of an objectively high risk of infringement
• Court limits fee award in view of accused infringers’ false statements to the industry regarding ownership rights in the patents

Posted in Patent Happening