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

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