April 2008 – Click for full issue

• Even where “ordinary meaning” applies, district courts must formally construe claim term if parties have a genuine dispute as to the scope of the claim
• Later-developed equivalent may be foreseeable for purposes of prosecution history estoppel if it is “reasonably obvious” from the prior art
• Tacking of laches periods may be proper where products are the same or similar
• Use of functional language in apparatus claim, and recitation of structure in a method claim, does not improperly mix statutory classes
• Express license to component of patented invention created an implied license to sell the component to anybody
• Sale “f.o.b. Canada” to U.S. purchaser is a sale “within” the U.S. under § 271(a) 5
• Patentee’s burden to prove entitlement to § 120 priority
• Covenant not to sue did not moot controversy in ANDA context for declaratory judgment claim
• Flaws in pre-suit investigation not relevant to “objective recklessness” inquiry for bad faith enforcement claims
• Assignee taking patent subject to a prior nonexclusive licensee not bound by arbitration clause contained in the license agreement
• Multi-district panel cites crowded docket conditions in E.D. Texas as a reason for not transferring a centralized case to that forum
• Federal Circuit finds noninfringement opinion of counsel defeated willful infringement charge
• Denying summary judgment of no willful infringement in view of Seagate