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)