January 2010 – Click for full issue

• Federal Circuit holds that the penalty for false marking under § 292 must be assessed on a per article basis with the district court setting the amount of the penalty anywhere from a fraction of a penny to a maximum of $500 per article falsely marked
• E.D. Texas applies on-going royalty to redesigned product since it was not more than colorably different from original adjudicated infringing product
• Lessons to note from the Federal Circuit’s opinion in i4i on the need for JMOL motions and opinions of counsel
• Mandamus granted to transfer infringement action to forum where accused product was developed since original forum had no “relevant factual connection” to the infringement action

April 2010 – Click for full issue

• Post Seagate cases show that the failure to obtain an opinion of counsel still weighs heavily in determining whether to enhance damages
• Using royalty rates in licenses given to settle infringement actions as evidence of a royalty rate in a hypothetical negotiation
• Accused infringer’s failure to challenge scope of a permanent injunction when appealing a final judgment precluded later challenge to the injunction’s scope when defending against a charge of contempt
• Federal Circuit overrules PTO’s methodology of calculating patent term adjustments where Period A delays “overlap” Period B delays

July 2010 – Click for full issue

• When multiple plaintiffs/relators sue for the same act of patent false marking

December 2009 – Click for full issue

• Eastern District of Virginia imposes tougher requirements for a patentee to obtain a preliminary injunction by requiring the patentee to make a “clear showing” of entitlement to relief
• Eastern District of Texas now applying a more main-stream view on transferring patent infringement actions
• Tafas saga concludes, but Federal Circuit may have raised roadblocks for future litigants to obtain vacatur as part of settling a patent litigation
• Federal Circuit rules that unclaimed effectiveness level could not save method claim from a finding of anticipation
• While excluding evidence of pending reexamination proceeding under F.R.E. 403, district court also excludes evidence of the “presumption of validity”
• The 2009-2010 edition of Matthews’ “Patent Jury Instruction Handbook” is now available

November 2009 – Click for full issue

• Status Report – Pleading patent infringement allegations in view of Iqbal, Twombly, McZeal, Colida, and Form 18
  • The Supreme Court’s Precedents Regarding Notice Pleading Under Rule 8
  • Form 18 and its Deficiencies
  • Federal Circuit Precedents on Pleading Patent Infringement Allegations and Form 18
  • How District Courts are Responding to Iqbal
  • Concluding Thoughts
• District court holds accused infringer may not assert improper revival of a patent that lapsed for not timely paying a maintenance fee as an affirmative defense to a charge of infringement under the guise of an alleged § 102(c) abandonment
• Questioning deponent as to whether it changed the design of an accused product in response to receiving an opinion of counsel improperly invaded the attorney-client privilege
• Patent infringement claim dismissed because it conflicted with a national security law that compelled the accused infringer to perform the acts accused of infringement
• Northern District of Illinois formally adopts local patent rules

October 2009 – Click for full issue

• Federal Circuit requires district courts to scrutinize carefully evidence offered to support an infringement damages award and vacates lump-sum royalty award
• Federal Circuit expands the defensive use of claim preclusion arising from a prior judgment of noninfringement
• Openness of “comprising” did not overcome restrictive scope required by claim’s use of the term “each”
• Registering an article in the Copyright Office did not make the article publicly available
• Delaware Judge states that bifurcation of damages and willfulness from infringement should be the norm in patent cases
• Funding university research did not convey an express or implied license to the resulting patented technology
• University researcher’s agreement to assign future inventions to university employer trumped by a later agreement researcher had with a commercial entity that provided for an automatic assignment
• Two Federal Circuit cases limiting claim scope based on “Present Invention” language
• Notice of patent pool covering an industry standard and a general charge that any product compliant with the standard infringed was not actual notice under § 287

September 2009 – Click for full issue

• E.D. Texas court rules that litigation defenses developed after infringement first began are irrelevant to Seagate’s objective prong unless they would have been apparent and considered by a reasonable person in the infringer’s position before the infringing activity began
• Federal Circuit to address en banc whether § 112 requires a “written description” requirement that is separate from enablement
• En banc panel of Federal Circuit holds that § 271(f) does not apply to method claims
• Excluding evidence of co-pending reexamination proceedings under FRE 403 – recent opinions from the Federal Circuit and two district courts
• Federal Circuit holds that willful failure to submit documentary information that could overcome a written-description rejection at the PTO precluded submitting that information as new evidence in a § 145 action
• District court holds claims to a computer implemented process valid under the transformation prong of Bilski where they required a visual display of the end product while claims that did not require a visual display were held invalid
• PTO issues interim examination guidelines for subject matter eligibility

Federal Circuit tightens requirements for pleading inequitable conduct in Exergen v. Walmart

August 2009 – Click for full issue

• Means-plus-function limitation with software as corresponding structure indefinite where specification only disclosed the functions done by the software but not how the software did the functions
• Functional limitation defining a structural attribute of a product only had to be met during manufacturing phase to show infringement even though product was made abroad
• Knowledge to a scientific certainty that invention works not required for conception
• Section 288’s limitation of costs for failing to disclaim an invalid claim questionably held to only apply to claims previously adjudicated invalid and not for claims proven invalid during the given suit
• Post-filing publication used to understand a prior art reference for purposes of showing anticipation or obviousness
• Reexamination could not be used to add material from a priority application to cure a break in continuity of disclosure
• Trial stipulation that licensees had standing did not preclude accused infringer from later showing alleged co-exclusive licensees lacked constitutional standing
• Trial counsel given suspended jail sentence and client subjected to procedural sanctions for counsel’s willful violation of an in limine order

June 2009 – Click for full issue

• Supreme Court holds that conclusory allegations of intent do not pass muster under Rule 8; ruling likely has applicability to inequitable conduct allegations
• Federal Circuit grants mandamus and overturns denial of transfer of venue in one E.D. Texas case, while denying mandamus in a second case
• En banc panel holds that process steps of a product-by-process claim must be met to show infringement
• “Displaying real-time” data construed not to require a literal instantaneous display
• Two-way test did not apply for obviousness-type double patenting rejection where rejected claims could have been presented in earlier application
• “Have-made” rights are inherent in right to “make”
• State statute-of-frauds defeats alleged oral exclusive license • Standing for a false patent marking claim requires government or public be harmed by the acts of false marking, mere technical violation of the statute did not constitute such harm