LMM-IP’s April 2009 newsletter, Patent Happenings,® presents concise summaries of important developments in U.S. patent law occurring during the month of April, 2009 from the author of the Annotated Patent Digest. Developments include:

1. Federal Circuit to consider en banc whether § 271(f) applies to process claims;

2. No duty to mark where patentee only asserts process claims and does not assert apparatus claims from same patent;

3. Judge Linn urges en banc hearing on intent element of inequitable conduct in case where failing to disclose Office Actions in a copending prosecution found to be a withholding of material information;

4. Claims to a “paradigm” for marketing software failed to claim patent eligible subject matter;

5. Claim added by amendment that omitted a structural element was invalid for failing the written description requirement where the specification did not describe an embodiment without the element;

6. Precritical date testing of durability to satisfy government regulators was not an experimental use;

7. Employee who only contributed a feature that was already in the prior art was not a joint inventor;

8. District court did not abuse its discretion by appointing an independent expert to testify to jury on issues of invalidity and infringement and disclosing the expert’s independent status to the jury;

9. Dismissal of infringement claim as a discovery sanction reversed