May 2009 – Click for full issue

• Foreign manufacturer’s display of accused product at a U.S. trade show supported exercising personal jurisdiction under Rule 4(k)(2) even though product was not offered for sale in the U.S.
• Patent misuse from using a patent to cause another patentee to refuse to license its patent
• Quanta precludes enforcement of a post-sale use condition, such as a single-use restriction
• Claims to artificially reducing a biological activity lacked adequate written description where specification failed to adequately describe how the reduction would be attained
• Obviousness-type double patenting for a method of making a product in view of a prior patent claiming the product assessed based on the methods of making known at the time the method application is filed
• Canceling independent claim and rewriting dependent claim in independent form creates presumption of surrender even though additional limitations had to be added to overcome prior art
• Patentee drug manufacturer did not have a duty to preserve electronic data before receiving its first Paragraph IV certification letter
• USPTO announces pilot patent prosecution highway with German patent office and extends pilot program with Australian patent office

April 2009 – Click for full issue

• Federal Circuit to consider en banc whether § 271(f) applies to process claims
• No duty to mark where patentee only asserts process claims and does not assert apparatus claims from same patent
• Judge Linn urges en banc hearing on intent element of inequitable conduct in case where failing to disclose Office Actions in a copending prosecution found to be a withholding of material information
• Claims to a “paradigm” for marketing software failed to claim patent eligible subject matter
• Claim added by amendment that omitted a structural element was invalid for failing the written description requirement where the specification did not describe an embodiment without the element
• Precritical date testing of durability to satisfy government regulators was not an experimental use
• Employee who only contributed a feature that was already in the prior art was not a joint inventor
• District court did not abuse its discretion by appointing an independent expert to testify to jury on issues of invalidity and infringement and disclosing the expert’s independent status to the jury
• Dismissal of infringement claim as a discovery sanction reversed

March 2009 – Click for full issue

• Contention of “practicing the prior art” could be used as evidence to negate intent for inducing infringement
• Bare bones statement of prior invention by potential accused infringer at the tail end of prosecution and inventor’s offer to further discuss the alleged prior invention satisfied inventor’s duty to investigate
• Generic drug maker’s uncooperative discovery practices justified extending 30-month stay in ANDA litigation
• Showing sold product was “reasonably capable” of being configured in an infringing manner failed to prove infringement
• Covenant-not-to-sue for past infringement did not moot case or controversy for accused infringer’s declaratory judgment
• Withdrawing infringement claims treated as granting an unconditional covenant-not-to-sue on those claims
• E.D. Texas court finds transfer unwarranted where sources of proof were divergently located and the Texas forum was more centrally located than the proposed transferee forum
• Settlement agreement was not § 287 “actual notice” for redesigned product
• Advertising infringing product as being “innovative” did not support a Lanham Act false advertising claim
• Firm submits Supreme Court amicus curiae brief in Bilski on behalf of biotech client

February 2009 – Click here for full issue

• Federal Circuit raises questions as to patent eligibility under § 101 of systems carrying out patent ineligible processes
• Providing information to patient on how a drug product worked did not claim patentable subject matter
• Four obviousness rulings from the Federal Circuit
• Statements made at oral hearing before BPAI held to create a disavowal of claim scope
• Use of “i.e.” in specification, rather than “e.g.” limited claim scope
• Alleged false marking of over 15,000 products was only a single offense
• Patents held unenforceable against accused infringer based on pre-suit destruction of documents

January 2009 – Click for full issue

• Federal Circuit grants mandamus reversing a denial of a motion to transfer by E.D. Texas
• Unresolved preliminary injunction motion prohibits staying case pending reexamination; stay requires continued existence of a “substantial question of patentability”
• Patentee’s selling a product in a forum does not support specific personal jurisdiction for an accused infringer’s declaratory judgment claim
• Patents held unenforceable for patentee’s deliberate failure to disclose patents to standard setting organization
• Adding a separate and distinct noninfringing feature does not avoid contributory infringement liability
• Granting licenses did not defeat permanent injunction
• Waiver found where intervening change in law arose before entry of final judgment
• Federal Circuit claim construction rulings
• Federal Circuit applies Bilski in biotech case
• Grouping claims requires a common limitation
• Patent-law expert could not testify on infringement or invalidity
• District court requires parties to show need for claim construction on a term-by-term basis
• Claim that licensee’s product was “covered by” a foreign patent could be heard in a U.S. court
• Ownership of an “essential” patent showed market power for antitrust claim
• Western District of Washington and District of Massachusetts adopt local patent rules

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

October 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 Pilot Patent Prosecution Highway Program with Danish Patent Office

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

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

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