November 2007 (Part II) – Click for full issue

• En banc rehearing on various aspects of design patent infringement ordered
• Alleged prosecution disclaimer was ambiguous, and therefore nonlimiting, where it resulted in an inoperable system
• Function described as something that “must” be done limited claim scope to structure requiring that function
• Failure to show prior invention worked for its intended purpose defeated § 102(g) anticipation challenge
• Replacing “ball bearings” with “curved members” was impermissible new matter supporting a written description rejection
• Infringer’s design around attempt defeated willful infringement claim
• Marking product’s packaging may be sufficient when product is a single use product destroyed upon use
• A district court concludes it is improper to render invalidity rulings as part of its order on claim construction
• Dispute resolution clause requiring all disputes regarding a patent be mediated or litigated in a specific district court precluded inter partes reexamination in the PTO
• Third party settlement agreement held discoverable by accused infringer since it had relevance to patentee’s lost profit claim
• Accused infringer’s efforts to supplement original declaratory judgment complaint with newly issued patents to create a first-to-file status rejected over patentee’s infringement suit
• Attorney argument did not constitute sufficiently egregious conduct necessary for relief under the fraud provisions of Rule 60(b)

November 2007 (Part I) – Click for full issue

• JMOL overturning willful infringement verdict granted in view of closeness of case and competent opinion of counsel
• Failure to incorporate entirety of grandparent specification in intervening specification defeated § 120 priority claim for child application
• Actual notice from corporate affiliate of patentee was sufficient under § 287 where affiliate was responsible for licensing and enforcing the patent
• Evidentiary burden shifting of Rule 11does not apply to claims for attorney fees under § 285
• Threat of contempt proceedings supported jurisdiction for declaratory judgment action regarding redesigned product
• Remand order based on district court’s decision not to exercise supplemental jurisdiction held unreviewable on appeal