August 2008 – Click for full issue

• Safe harbor provision of § 271(e)(1) did not apply to research tool used in obtaining data for FDA submission where tool itself was not subject to FDA pre-market approval
• Evidentiary burdens for inequitable conduct must be “strictly enforced”
• Patentee must take some affirmative action to show case or controversy for declaratory judgment
• Patentee may not base irreparable harm to support an injunction on harm allegedly suffered by non-joined exclusive licensee
• No grace period for an accused infringer to cease accused activity before being liable for damages when given notice under § 287(a)
• “Original application” for purposes of eligibility for inter partes reexamination includes continuing applications
• Federal Circuit addresses inherent anticipation of structure claimed with a functional limitation
• Oral opinion of counsel, obtained post-verdict, defeats willful infringement charge for post-verdict sales
• One district court partially lifts stay during reexamination so patentee can obtain discovery to rebut PTO’s obviousness rejection; second district court refuses to permit accused infringer’s confidential discovery materials to be released for use by patentee in reexamination proceeding
• PTO will issue a new effective date for regulations governing applications with patentably indistinct claims