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