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