July 2008 – Click for full issue

• District court imposes requirement that parties prove a need for claim construction before it will construe claim term
• E.D. Texas jury asked to determine future royalty rate in addition to determining damages for past infringement
• Differences in second product did not avoid claim preclusion where those differences did not take second product outside the literal scope of a claim limitation
• Implementing prior art computer auction system on internet was an obvious adaptation of existing technology
• Method claim not infringed under a theory of joint infringement where the accused infringer did not control user’s inputting of data into the computer system
• Laches barred alleged omitted inventor’s correction of inventorship claim
• “Comprising,” as a transition term, may not trump a surrender of claim scope evident from the prosecution history
• Failure to provide sufficient context of accused product so Federal Circuit could see how claim construction rulings could impact infringement determination required remand for clarification
• Duty to investigate accused product before filing suit does not apply to ANDA litigation8
• PTO commences pilot Triway Patent Prosecution Highway with EPO and JPO
• Peer Review Pilot Program extended
• PTO cautions applicants regarding export control laws and outsourcing of patent prosecution work to foreign countries

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