December 2007 (Part II) – Click for full issue

• Conditions specified by an “e.g.” in inventor’s lexicographic definition limited claim scope
• Improper to read into lexicographic definition additional requirement of a singular condition
• Use of same material to make two component parts vitiated claim limitation requiring two different materials
• Product-to-product comparison and customer testimonials insufficient to prove infringement on summary judgment
• Customer-suit exception did not apply to manufacturer who only supplied a noninfringing component to the accused product, even though its component was a key component
• Patentee’s lawyers’ communications with employee of accused infringer under the guise of being an ordinary purchaser of the accused system violated ethical rules and warranted striking patentee’s technical expert
• Patentee’s lawyer sanctioned for asserting a baseless request for sanctions
• Re-deposition ordered and accused infringer’s counsel sanctioned for improper objections that obstructed original deposition
• Accused infringer’s 30(b)(6) designee’s declaration that contradicted his previous deposition testimony stricken, but declaration from other fact witness offered by accused infringer admitted even though it too contradicted the 30(b)(6) deposition testimony
• Senators Hatch and Leahy ask the Senate to work on the current patent reform bill as early as possible in the new year

December 2007 (Part I) – Click for full issue

• Substantial question of invalidity supported motion to dismiss willful infringement claims
• Obviousness requires more than showing a predictability of probable success
• Corroboration of just the existence of a prototype without corroborating evidence that the prototype worked for its intended purpose was insufficient to prove prior invention
• Federal Circuit addresses “unavoidable” standard for reviving lapsed patents
• Injunctive relief held unavailable in a § 146 action
• UCC-based indemnification claim survives supplier’s motion to dismiss
• Applying Seagate to rule that discovery from in-house counsel was limited to pre-litigation communications
• OMB approves PTO’s new IDS rules