January 2008 – Click for full issue

• Statements in prosecution history elaborating on definition of claim term but not otherwise unmistakably surrendering claim scope did not create an argument-based prosecution history estoppel
• Recovery of an upfront market-entry fee as part of a reasonable royalty award negated any irreparable harm for future infringement, and required vacating permanent injunction
• Functional definition of claim term evident in specification did not save claim from indefiniteness where specification failed to provide discernible boundaries of the claim’s scope
• Paper posted on ftp site but not formally indexed may have lacked sufficient accessibility to be a prior art printed publication
• New claims added during reexamination to cover a competitor’s product are not invalid under § 305 even though patentee does not state on the record that the new claims are being added to distinguish over the prior art
• Inequitable conduct from attorney’s failure to disclose notes employee shared with attorney providing additional information on a prior art reference
• Use of the indefinite article “a” in a claim limitation does not restrict the claim to a singular meaning absent evidence of a clear disclaimer of the non-singular meaning
• Noninfringement defenses and credible invalidity arguments must be considered under the objective standard for willful infringement
• Presence of “means for” in claim limitation did not invoke § 112, ¶ 6.
• District court erred in excluding a disclosed embodiment from claim scope where there was no prosecution disclaimer
• Offering infringing product, while delivering a noninfringing product, did not avoid lost profit damages
• Constructive knowledge of infringement for purposes of laches found in view of patentee’s expansive view of claim scope asserted to justify a high royalty award
• Claims held invalid due to inventor’s failure to claim the aspects of the invention it described in the specification as being “crucial” to the invention’s performance
• District court denies obviousness summary judgment motions due to issues of fact on motivation to combine
• District court refuses to construe claim terms before trial where construction likely requires an evidentiary hearing
• Patent prosecution highway pilot program extended to Canada and Korea
• USPTO commences pilot “New Route” program with JPO
• USPTO to enforce requirement that oath expressly acknowledge duty to disclose information “material to patentability as defined in §1.56.”