September 2008 – Click for full issue

• En banc Federal Circuit limits patent eligible subject matter for processes patents
• Reasonable non-infringement claim construction position defeats charge of willful infringement
• District Court rules that Seagate precludes enhanced damages for post-filing conduct
• Doctrine of equivalents may not be available for limitations using the term “about”
• District court rejects PTO’s methodology of calculating term extensions for PTO delays for short changing patentees
• Collection of technical specifications having same publisher but different publication dates was not a “single” prior art reference for purposes of anticipation
• Anticipation not shown where it is necessary to combine separate disclosures within the same reference to arrive at the claimed invention
• Patentee need not actually know of suspected infringement to give “actual notice” of its patent rights for purposes of § 287(a)
• Nexus to show commercial success must be tied to differences between prior art and claimed invention
• Patentee bears a production burden to prove entitlement to § 120 priority, but does not bear a burden of persuasion
• Absence of working examples supported finding that prior art patent did not enable later-claimed invention for purposes of anticipation
• No antitrust violation from reverse payment by patentee to accused infringer to not enter market or challenge validity of patent
• USPTO commences a Patent Prosecution Highway with Danish Patent Office