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