November 2008 – Click for full issue

• Nonpatent Supreme Court case may cast further doubt on applying a presumption of irreparable harm for preliminary injunctions in patent matters
• Federal Circuit will not consider Appointment Clause challenges if not first presented to PTO
• Summary judgment of obviousness vacated due to fact issue on whether asserted prior art was part of the field of invention a PHOSITA would search and whether the art taught away from using the asserted prior art
• Accused infringer may recoup royalties paid to a patentee under a sunset provision in an injunction if the injunction is later ruled to have been wrongfully issued
• Issue preclusion precluded patentee litigating entitlement to lost profits even though different patents were at issue
• Accused infringer could not split/sever asserted patent claims into a second suit so that it could seek attorneys fees only as to the severed claims
• Parties agreeing to a royalty and escrow payment plan before accused infringer filed a declaratory judgment action negated a right to a jury trial for the declaratory judgment claims
• FTC to hold hearings on emerging business models of intellectual property ownership and how the current remedies law impacts those models
• PTO to charge registered attorneys and agents an annual fee to practice before the agency