June 2008 – Click for full issue

• Supreme Court extends patent exhaustion to method claims
• Judge Clark orders parties to limit number of claim terms and asserted claims
• “Plausible” invalidity defenses defeat willful infringement even though court found infringer intentionally infringed
• Federal Circuit notes possibility of patentee recovering nonexclusive licensee/subsidiary’s lost profits if those lost profits inexorably flow to the patentee
• Prosecution disclaimer in parent patent limited claims in child patent even though limitation expressly limiting claim in parent patent was absent in child patent
• “Partially” construed to exclude “totally”
• Entire-market-value rules does not require that patentee make or sell unpatented components sought to be included in the royalty base
• Actions of equitable patent owner are not relevant in considering whether a delay in paying maintenance fee was unavoidable
• Court gives collateral estoppel effect to PTO’s final rejection of claim in reexamination proceeding even though appeal to Federal Circuit was pending
• PTO unveils new rules for Appeal Briefs

May 2008 – Click for full issue

• Conditioning stay pending reexamination on accused infringer stipulating it would not use prior art cited in the reexamination
• Judge Rader speaks out against perceived lessening of required level of intent in inequitable conduct determinations
• Declaratory judgment claims for developing products
• Limited breadth of disclosure in specification limits claim scope
• Specification did not trump unambiguous claim language to save claim from drafting error
• Canceled and unasserted claims must be considered in determining whether a proposed construction reads out a preferred embodiment
• Arguments in prosecution history effectively limited scope of structural equivalents for a means-plus-function limitation
• Claim preclusion did not bar a second infringement suit even though the product accused in second suit could have been adjudicated in the first suit
• Claims added during reexamination solely to avoid a prior adverse claim construction ruling were improper under § 305
• Employee’s knowledge of infringing activity to start laches clock is not imputable to patentee if employee does not have duties regarding licensing and enforcing the asserted patent
• Settlement agreement with manufacturer allowed customer to practice later issuing patent despite provisions allegedly to the contrary
• Wavier for not first raising argument to district court not excused by use of new counsel on appeal

April 2008 – Click for full issue

• Even where “ordinary meaning” applies, district courts must formally construe claim term if parties have a genuine dispute as to the scope of the claim
• Later-developed equivalent may be foreseeable for purposes of prosecution history estoppel if it is “reasonably obvious” from the prior art
• Tacking of laches periods may be proper where products are the same or similar
• Use of functional language in apparatus claim, and recitation of structure in a method claim, does not improperly mix statutory classes
• Express license to component of patented invention created an implied license to sell the component to anybody
• Sale “f.o.b. Canada” to U.S. purchaser is a sale “within” the U.S. under § 271(a) 5
• Patentee’s burden to prove entitlement to § 120 priority
• Covenant not to sue did not moot controversy in ANDA context for declaratory judgment claim
• Flaws in pre-suit investigation not relevant to “objective recklessness” inquiry for bad faith enforcement claims
• Assignee taking patent subject to a prior nonexclusive licensee not bound by arbitration clause contained in the license agreement
• Multi-district panel cites crowded docket conditions in E.D. Texas as a reason for not transferring a centralized case to that forum
• Federal Circuit finds noninfringement opinion of counsel defeated willful infringement charge
• Denying summary judgment of no willful infringement in view of Seagate

March 2008 – Click for full issue

• Corresponding structure of a microprocessor having “appropriate programming” was indefinite for not disclosing the algorithm performed by the microprocessor
• Safe-harbor provision of § 271(e)(1) applies to ITC proceedings
• Protection from obviousness-type double patenting challenges afforded by § 121 does not apply to patents issuing from CIP applications
• Statements disavowed claim scope even though examiner may not have relied upon them
• Festo tangential-related exception not shown by fact that equivalent and claim limitation both perform a function not done by the prior art
• Federal Circuit reverses denial of JMOL for obviousness
• Obvious-to-try argument rejected by Federal Circuit as being an improper hindsight analysis
• Certificate of Correction correcting named inventorship has retroactive effect
• Holder of a security interest in a patent is not a necessary party to an infringement suit
• Statement in invalidity opposition brief that patentee would not assert challenged claim in any future litigation mooted controversy as to that claim
• Patent ownership may pass by operation of law such as intestate succession without a formal written assignment
• Court refuses to stay discovery on opinions of counsel until patentee makes a showing of an objectively high risk of infringement
• Court limits fee award in view of accused infringers’ false statements to the industry regarding ownership rights in the patents

February 2008 – Click for full issue

• En banc hearing on patentability of business methods and processes with only abstract or mental steps
• Paying royalties under protest did not support licensee estoppel to preclude declaratory judgment validity challenge
• Courts should consider convenience factors when deciding if the first-to-file rule applies
• No actual case or controversy triggered by providing notice letter of the issuance of a patent without any comment on infringement
• Attorney fees and penalty assessed for presenting misleading arguments to the jury that sought to avoid adjudicated claim construction
• 12-year delay in seeking a certificate of correction did not support intervening rights, prosecution laches, patent misuse, waiver, or implied license, but could support traditional laches and equitable estoppel
• Ordinary function performed by claim term used to construe structural requirements
• Failing to enable alternative embodiment led to summary judgment of invalidity
• Two Federal Circuit cases on amendment-based estoppel
• Implicit motivation to combine raised a substantial question on validity to preclude preliminary injunction
• Offering “production units precludes experimental-use to avoid an on-sale bar
• Witnesses may be cross examined on whether they worked with a jury consultant
• USPTO proposes changes to rules regarding the deposit of biological materials
• PTO’s report to congressional oversight committee

January 2008 – Click for full issue

• Statements in prosecution history elaborating on definition of claim term but not otherwise unmistakably surrendering claim scope did not create an argument-based prosecution history estoppel
• Recovery of an upfront market-entry fee as part of a reasonable royalty award negated any irreparable harm for future infringement, and required vacating permanent injunction
• Functional definition of claim term evident in specification did not save claim from indefiniteness where specification failed to provide discernible boundaries of the claim’s scope
• Paper posted on ftp site but not formally indexed may have lacked sufficient accessibility to be a prior art printed publication
• New claims added during reexamination to cover a competitor’s product are not invalid under § 305 even though patentee does not state on the record that the new claims are being added to distinguish over the prior art
• Inequitable conduct from attorney’s failure to disclose notes employee shared with attorney providing additional information on a prior art reference
• Use of the indefinite article “a” in a claim limitation does not restrict the claim to a singular meaning absent evidence of a clear disclaimer of the non-singular meaning
• Noninfringement defenses and credible invalidity arguments must be considered under the objective standard for willful infringement
• Presence of “means for” in claim limitation did not invoke § 112, ¶ 6.
• District court erred in excluding a disclosed embodiment from claim scope where there was no prosecution disclaimer
• Offering infringing product, while delivering a noninfringing product, did not avoid lost profit damages
• Constructive knowledge of infringement for purposes of laches found in view of patentee’s expansive view of claim scope asserted to justify a high royalty award
• Claims held invalid due to inventor’s failure to claim the aspects of the invention it described in the specification as being “crucial” to the invention’s performance
• District court denies obviousness summary judgment motions due to issues of fact on motivation to combine
• District court refuses to construe claim terms before trial where construction likely requires an evidentiary hearing
• Patent prosecution highway pilot program extended to Canada and Korea
• USPTO commences pilot “New Route” program with JPO
• USPTO to enforce requirement that oath expressly acknowledge duty to disclose information “material to patentability as defined in §1.56.”

December 2007 (Part II) – Click for full issue

• Conditions specified by an “e.g.” in inventor’s lexicographic definition limited claim scope
• Improper to read into lexicographic definition additional requirement of a singular condition
• Use of same material to make two component parts vitiated claim limitation requiring two different materials
• Product-to-product comparison and customer testimonials insufficient to prove infringement on summary judgment
• Customer-suit exception did not apply to manufacturer who only supplied a noninfringing component to the accused product, even though its component was a key component
• Patentee’s lawyers’ communications with employee of accused infringer under the guise of being an ordinary purchaser of the accused system violated ethical rules and warranted striking patentee’s technical expert
• Patentee’s lawyer sanctioned for asserting a baseless request for sanctions
• Re-deposition ordered and accused infringer’s counsel sanctioned for improper objections that obstructed original deposition
• Accused infringer’s 30(b)(6) designee’s declaration that contradicted his previous deposition testimony stricken, but declaration from other fact witness offered by accused infringer admitted even though it too contradicted the 30(b)(6) deposition testimony
• Senators Hatch and Leahy ask the Senate to work on the current patent reform bill as early as possible in the new year

December 2007 (Part I) – Click for full issue

• Substantial question of invalidity supported motion to dismiss willful infringement claims
• Obviousness requires more than showing a predictability of probable success
• Corroboration of just the existence of a prototype without corroborating evidence that the prototype worked for its intended purpose was insufficient to prove prior invention
• Federal Circuit addresses “unavoidable” standard for reviving lapsed patents
• Injunctive relief held unavailable in a § 146 action
• UCC-based indemnification claim survives supplier’s motion to dismiss
• Applying Seagate to rule that discovery from in-house counsel was limited to pre-litigation communications
• OMB approves PTO’s new IDS rules

November 2007 (Part II) – Click for full issue

• En banc rehearing on various aspects of design patent infringement ordered
• Alleged prosecution disclaimer was ambiguous, and therefore nonlimiting, where it resulted in an inoperable system
• Function described as something that “must” be done limited claim scope to structure requiring that function
• Failure to show prior invention worked for its intended purpose defeated § 102(g) anticipation challenge
• Replacing “ball bearings” with “curved members” was impermissible new matter supporting a written description rejection
• Infringer’s design around attempt defeated willful infringement claim
• Marking product’s packaging may be sufficient when product is a single use product destroyed upon use
• A district court concludes it is improper to render invalidity rulings as part of its order on claim construction
• Dispute resolution clause requiring all disputes regarding a patent be mediated or litigated in a specific district court precluded inter partes reexamination in the PTO
• Third party settlement agreement held discoverable by accused infringer since it had relevance to patentee’s lost profit claim
• Accused infringer’s efforts to supplement original declaratory judgment complaint with newly issued patents to create a first-to-file status rejected over patentee’s infringement suit
• Attorney argument did not constitute sufficiently egregious conduct necessary for relief under the fraud provisions of Rule 60(b)

November 2007 (Part I) – Click for full issue

• JMOL overturning willful infringement verdict granted in view of closeness of case and competent opinion of counsel
• Failure to incorporate entirety of grandparent specification in intervening specification defeated § 120 priority claim for child application
• Actual notice from corporate affiliate of patentee was sufficient under § 287 where affiliate was responsible for licensing and enforcing the patent
• Evidentiary burden shifting of Rule 11does not apply to claims for attorney fees under § 285
• Threat of contempt proceedings supported jurisdiction for declaratory judgment action regarding redesigned product
• Remand order based on district court’s decision not to exercise supplemental jurisdiction held unreviewable on appeal