October 2007 (Part II) – Click for full issue

• District Court grants preliminary injunction enjoining the November 1 implementation of the new PTO rules on continuation applications and limiting number of claims
• Ongoing royalty for post-judgment infringement may be proper in lieu of a permanent injunction
• Generic’s failure to show an apparent reason a PHOSITA would have selected a certain “lead” compound defeated its obviousness challenge
• ITC erred in claim construction requiring a choice of measuring methods
• Contract-based patent ownership claim under Bayh-Doyle Act did not “arise under” the patent laws
• Claims of extreme breadth in a highly unpredictable art were not enabled by a disclosure of a single working embodiment
• Failing to use words “incorporate by reference” defeated contention that references were incorporated into the specification
• Infringer’s apparent inability to pay damages award justified granting permanent injunction
• Patentee’s opinion of counsel provided defense against prevailing accused infringer’s request for attorney’s fees
• State’s waiver of sovereign immunity in one action did not extend to a second action involving the same parties and same subject matter
• Court orders pro bono representation of indigent patent infringement plaintiff

October 2007 (Part I) – Click for full issue

• Substitution of known multiplexer obvious
• Evidence of long-felt need raised fact issue on whether there was an apparent reason to combine
• Inequitable conduct arising from improperly paying small entity fees, falsely claiming priority to earlier applications, failing to disclose related litigation, failing to disclose declarant’s financial interests, and withholding prior art
• Failure to disclose Office Actions from copending continuation applications during reexamination proceeding was inequitable conduct
• Equivalent foreseeable for prosecution history estoppel since it fell within scope of original claim
• Legal malpractice claims against patent attorneys held to arise under § 1338 where patent law is a necessary element of the malpractice claims
• Summary contempt proceedings apply to ANDA litigations
• Phrase “obtained by the process of claim 1” held to make the claim a dependent claim
• Whether prior art precludes scope of equivalents held to be a question of law for the court
• State university waived its sovereign immunity by agreeing to a forum selection clause in a license agreement
• Field of use licensee lacks standing to sue in its own name
• PTO issues guidelines for determining obviousness rejections in view of KSR
• PTO revises implementation of new rules

September 2007 (Part II) – Click for full issue

• Claims in a business method patent effectively claiming only a mental process failed to claim statutory subject matter (CAFC)
• Electronic signals held not to be patentable subject matter (CAFC)
• Liability for divided infringement requires that one actor directs or controls the other actor (CAFC)
• Injunction enjoining patentee from publicizing its infringement claims vacated where the claims were not objectively baseless (CAFC)
• Infringement proven with comparative test data on unclaimed features where that data provided information on the presence of claimed features (CAFC)
• Subject matter jurisdiction for declaratory judgment action not defeated by patentee’s failure to assert an infringement counterclaim (CAFC)
• Pre and post event documentary evidence corroborated “public use” testimony (CAFC)
• “Comprised of” generally treated as an open-ended transition term, but surrenders in prosecution history limited openness (CAFC)
• Bankruptcy plan that granted right to sue to a first entity and legal title to the patent to a second entity defeated first entity’s standing (CAFC)
• Special Masters for claim construction (ED Mich)
• Issue preclusion barred all invalidity defenses even those not raised in underlying action (NDCal)
• No patent misuse from including a non-compete covenant in licensing agreement (7th Cir.)

September 2007 (Part I) – Click for full issue

• Lack of an enabling disclosure for one embodiment of a means-plus-function limitation invalidated claim even though alternate embodiment was fully enabled
• Purified form of a chemical found obvious where one of ordinary skill had the capability to purify the prior art composition
• Purified form of a chemical found NOT obvious where there was no reasonable expectation of success that the chemical could be purified
• Disclaimer of equivalents found when applicant characterized prior art as being “less effective” than the claimed invention
• Failure to show actual infringing uses defeated claim of inducing infringement where accused product also had noninfringing uses
• “Ordinary observer” for assessing design patent infringement may be industrial purchaser of component part, rather than retail consumer, if the design only covers the component part
• Price disparity defeats a patentee’s claim for lost profit damages
• Bell Atlantic does not require patentee to plead facts showing how accused product infringes
• District court erred in not applying narrow claim scope evident from prosecution history
• Named inventor, who had assigned patent, held a proper party to an unenforceability DJ action based on his potential liability for attorney’s fees under § 285
• House passes patent reform bill
• PTO issues guidelines for Examination Support Document; announces pilot UK prosecution highway program, and new rules for PCT applications

August 2007 (Part II) – Click for full issue

• PTO announces its final rules on continuation applications and examining claims
• Patentee’s failure to produce a fully automated computer-aided design system as claimed showed lack of an enabling disclosure (CAFC)
• Points of novelty for design patents may lie in combinations that are a non-trivial advance over the art (CAFC)
• District court’s claim construction order not binding on PTO during reexamination (CAFC)
• State-law fraud claim required jury to determine issues of conception for later use in § 256 correction of inventorship claim (CAFC)
• Foreign priority applied where foreign application had § 112 support for a species within the scope of the count (CAFC)
• PTO must meaningfully consider applicant’s rebuttal evidence before finalizing an obviousness rejection (CAFC)
• Patentee’s lost-profits claim negated its contention that its patent was not “essential” to an industry standard (D.Del.)
• Pioneer drug manufacturer’s settlement with generic manufacturers mooted re-seller’s declaratory judgment claim (S.D.N.Y.)
• Notice under § 287 from filing complaint measured from filing date, not service date (N.D. Ill.)
• One month delay in seeking leave to amend failed to show diligence (E.D.Tex.)

Special Report discussing the In re Seagate opinion

August 2007 (Part I) – Click for full issue

• Proving prior art is analogous art “goes a long way” to show a motivation to combine (CAFC)
• Substituting multiplexer for bus ruled obvious on JMOL motion despite jury verdict to contrary (N.D. Cal.)
• Internet-based patent survives § 103 attack (W.D. Pa.)
• Disavowal in specification limited claim scope to exclude accused product (CAFC)
• Accused infringer need not negotiate with a patentee who wants to negotiate rather than litigate, but may file a DJ action (CAFC)
• Prosecuting attorney identified in a judicial opinion as having committed inequitable conduct does not have the right to appeal (CAFC)
• Federal patent law preempts D.C. statute limiting what patentees could charge for patented drug products (CAFC)
• Foreign priority requires filing entity is acting on behalf of the named inventor at the time it files the foreign application (CAFC)
• Using tentative claim construction rulings in Markman procedures (N.D. Iowa)
• Patents held unenforceable for failing to disclose them to standard setting body (S.D. Cal.)
• Case or controversy requirement used by court to exclude products from suit (M.D. Pa)
• Failing to include material term when presenting settlement agreement in open court precluded later inclusion of the omitted term (S.D.N.Y.)
• PTO proposes rule changes to claims containing alternative language such as Markush claims

July 2007 (Part II) – Click for full issue

• Invalidity declaratory judgment counterclaim dismissed for lack of immediacy (CAFC)
• Experimental activities fell within safe harbor of § 271(e)(1) (CAFC)
• Double patenting found where second patent claimed an element of a combination claimed in the first patent (CAFC)
• Mere capability to perform claimed step insufficient alone to show infringement (CAFC)
• Unexpired presidential review period precludes appeal of ITC exclusion order (CAFC)
• Permanent injunction denied in eBay case (E.D Va.)
• Laches periods tacked where products were essentially identical from the viewpoint of the infringement analysis (E.D Pa.)
• Disparate elements in single reference did not anticipate claimed combination (N.D. Cal.)
• Accused infringer does not have to formally plead reliance on opinion of counsel to defend against willful infringement charge (D. Del.)
• Adverse inference instruction on credibility and restricting presentations to the jury ordered as sanctions for willful discovery violation (E.D. Tex.)
• PTO applies KSR in three “Precedential” opinions affirming obviousness rejections
• PTO proposes rule changes for Appeal Briefs that may impose harsh burdens on applicants

July 2007 (Part I) – Click for full issue

• Festo, Part XIII – Alternative in prior art is “foreseeable” even if its use as an equivalent is not recognized at the time of the amendment (CAFC)
• Inventor acted as own lexicographer by implication even though applied meaning was contrary to term’s customary meaning (CAFC)
• Estoppel limited scope of “general purpose computer” to exclude microprocessors (CAFC)
• Stare decisis bound non-party to claim construction given by Federal Circuit (D.Mass)
• Confirming result theorized by the prior art insufficient to show invention not obvious (CAFC)
• Skill level of a drug formulator, not a general medical practitioner, applied to method of treatment claim (CAFC)
• Contributory infringement under § 271(c) does not reach sale of a service (CAFC)
• Complying with marking requirement did not create a case or controversy to support a declaratory judgment claim (S.D. Ohio)
• OMB approves proposed PTO rule changes on continuation applications and restrictions on number of claims (PTO)

June 2007 (Part II) – Click for full issue

• Obviousness still requires evidence of a motivation to combine or modify (CAFC)
• “Black box” disclosure of “generally known” structure not sufficient for § 112, ¶ 6 (CAFC)
• Petition to Make Special showed claim scope broader than single disclosed embodiment (CAFC)
• Attorney argument characterizing reference not inequitable conduct (CAFC)
• Pressure to redesign product created case or controversy for declaratory judgment claim (WDPa)
• Permanent injunction granted to non-manufacturing patentee (ED Tex)
• Judgment against patentee ordered as a sanction for concealing test data (ED Tex)
• Infringing “offer for sale” limited to sales intended to be made in the U.S. (ND Cal)
• “Unintentional” revival standard does not apply to abandoned PCT application (ND Cal)
• Conclusory pleading of invalidity insufficient for declaratory judgment counterclaim, but sufficient for affirmative defense (SD Ala)