Patent Happenings, June 2008

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Developments in U.S. patent law for the month of June 2008. Topics include: 1) Supreme Court extends patent exhaustion to method claims; 2) Judge Clark orders parties to limit number of claim terms and asserted claims; 3) “Plausible” invalidity defenses defeat willful infringement even though court found infringer intentionally infringed; 4) Federal Circuit notes possibility of patentee recovering nonexclusive licensee/subsidiary’s lost profits if those lost profits inexorably flow to the patentee; 5)Prosecution disclaimer in parent patent limited claims in child patent even though limitation expressly limiting claim in parent patent was absent in child patent; 6) “Partially” construed to exclude “totally” ; 7) Entire-market-value rules does not require that patentee make or sell unpatented components sought to be included in the royalty base; 8) Actions of equitable patent owner are not relevant in considering whether a delay in paying maintenance fee was unavoidable; 9) Court gives collateral estoppel effect to PTO’s final rejection of claim in reexamination proceeding even though appeal to Federal Circuit was pending; and 10 PTO unveils new rules for Appeal Briefs.

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