Patent Happenings, February 2008


Newsletter on recent developments in patent law during February 2008, including: 1. En banc hearing on patentability of business methods and processes with only abstract or mental steps; 2. Paying royalties under protest did not support licensee estoppel to preclude declaratory judgment validity challenge; 3. Courts should consider convenience factors when deciding if the first-to-file rule applies; 4. No actual case or controversy triggered by providing notice letter of the issuance of a patent without any comment on infringement; 5. Attorney fees and penalty assessed for presenting misleading arguments to the jury that sought to avoid adjudicated claim construction; 6. Twelve-year delay in seeking a certificate of correction did not support intervening rights, prosecution laches, patent misuse, waiver, or implied license, but could support traditional laches and equitable estoppel; 7. Ordinary function performed by claim term used to construe structural requirements; 8. Failing to enable alternative embodiment led to summary judgment of invalidity; 9. Two Federal Circuit cases on amendment-based estoppel; 10. Implicit motivation to combine raised a substantial question on validity to preclude preliminary injunction; 11. Offering “production units” precludes experimental-use to avoid an on-sale bar; and 12. Witnesses may be cross examined on whether they worked with a jury consultant.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Robert Matthews, Jr., Matthews Patent-Law Consulting | Attorney Advertising

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