Patent Happenings, November 2008


Newsletter presents concise summaries of important developments in U.S. patent law occurring during the month of November, 2008. Developments include:

1.) Nonpatent Supreme Court case may cast further doubt on applying a presumption of irreparable harm for preliminary injunctions in patent matters;

2.) Federal Circuit will not consider Appointment Clause challenges if not first presented to PTO;

3.) Summary judgment of obviousness vacated due to fact issue on whether asserted prior art was part of the field of invention a PHOSITA would search and whether the art taught away from using the asserted prior art;

4.) Accused infringer may recoup royalties paid to a patentee under a sunset provision in an injunction if the injunction is later ruled to have been wrongfully issued;

5.) Issue preclusion precluded patentee litigating entitlement to lost profits even though different patents were at issue;

6.) Accused infringer could not split/sever asserted patent claims into a second suit so that it could seek attorneys fees only as to the severed claims;

7.) Parties agreeing to a royalty and escrow payment plan before accused infringer filed a declaratory judgment action negated a right to a jury trial for the declaratory judgment claims;

8.) FTC to hold hearings on emerging business models of intellectual property ownership and how the current remedies law impacts those models; and

9.) PTO to charge registered attorneys and agents an annual fee to practice before the agency.

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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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