June 2008 – Click for full issue

• Supreme Court extends patent exhaustion to method claims
• Judge Clark orders parties to limit number of claim terms and asserted claims
• “Plausible” invalidity defenses defeat willful infringement even though court found infringer intentionally infringed
• Federal Circuit notes possibility of patentee recovering nonexclusive licensee/subsidiary’s lost profits if those lost profits inexorably flow to the patentee
• Prosecution disclaimer in parent patent limited claims in child patent even though limitation expressly limiting claim in parent patent was absent in child patent
• “Partially” construed to exclude “totally”
• Entire-market-value rules does not require that patentee make or sell unpatented components sought to be included in the royalty base
• Actions of equitable patent owner are not relevant in considering whether a delay in paying maintenance fee was unavoidable
• Court gives collateral estoppel effect to PTO’s final rejection of claim in reexamination proceeding even though appeal to Federal Circuit was pending
• PTO unveils new rules for Appeal Briefs

Posted in Patent Happening