Patent Reform Act of 2007 scheduled for consideration this month

The Patent Reform Act of 2007 (S. 1145) is now officially back on the radar. It was recently placed on the Senate's calendar, and is likely to be considered by the full Senate sometime this month. This has resulted in a corresponding increase in the lobbying efforts by those on both sides of the debate. […]

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Claim construction excluding disclosed embodiment improper absent disclaimer of some kind

In a decision today, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement. The district court's construction of one of the claim limitations resulted in certain embodiments of the invention disclosed in the figures to be excluded from the scope of the claims. Based on this construction, the […]

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Sufficient structure recited in claim limitation using “means” to prevent application of – 112 – 6

In a decision yesterday, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement. The district court held the relevant claim term was a means-plus-function limitation, as it used the word "means," as well as because in an interview summary in the prosecution history, it appeared the USPTO interpreted […]

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Tenth Circuit: Submitting eBay VeRO notice confers jurisdiciton in alleged infringer’s home state

In a recent decision, the Tenth Circuit reversed a district court's dismissal of a copyright case for lack of personal jurisdiction. The case arose out of the efforts by a copyright holder to have an eBay auction for allegedly infringing products removed via eBay's VeRO program. After the auction was removed, the alleged infringer filed […]

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EU highest court rules ISPs not required to identify P2P users allegedly infringing copyrights

In a decision released today, the highest court in the EU, the European Court of Justice, ruled that under EU law, internet service providers (ISPs) are not required, in the course of a civil lawsuit, to disclose the identity of an individual subscriber associated with a particular IP address. The case arose out of an […]

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No damages for convoyed sales when no functional relationship between patented and unpatented goods

In a decision today, the Federal Circuit affirmed a district court's decision setting aside the portion of a jury verdict awarding convoyed sales to a patentee, and sustaining the portion of the verdict finding the alleged infringer had not shown invalidity via public use. There was no evidence of a functional relationship between the patented […]

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Claims to “fragile gel” indefinite even though term defined in specification

In a second decision Friday, the Federal Circuit affirmed a district court's finding of 35 U.S.C. § 112, second paragraph indefiniteness. The term was defined in the specification, however the district court held that definition was too subjective and unclear, largely because it relied on relative terms. The proper scope was also not discernable from […]

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Disclosure of prior art abstract only when more relevant detail known results in inequitable conduct

In a decision Friday, the Federal Circuit affirmed a district court's finding of inequitable conduct based on nondisclosure of details of a poster presentation presented at a scientific conference. While the patentee disclosed the abstract during prosecution of the patents-in-suit, notes taken by one of the patentee's employees with much more detail of what was […]

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Oppositions to motions for summary judgment filed in cases challenging claim and continuation rules

Yesterday, the USPTO, Glaxo, and Dr. Tafas filed their oppositions to the motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules. At first glance, they make many of the same arguments raised in the parties' motions for summary judgment. Interestingly, however, the USPTO has also moved to strike portions […]

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USPTO to start enforcing requirement that inventor oaths include reference to duty of disclosure

In a notice dated yesterday, the USPTO announced that it will begin enforcing compliance with 37 C.F.R. § 1.63(b)(3), which requires that inventor oaths include an acknowledgement of the duty to disclose information material to patentability under 37 C.F.R. § 1.56. Oaths filed on or after June 1, 2008 will have to have the language […]

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