THE IP LAW OUTLINE HAS BEEN IMPROVED SIGNIFICANTLY SINCE THE LAST POSTING!  For easier access to the information in the Outline, several of the sections include a number of new subheadings.  For example, in CLAIM CONSTRUCTION, new subheadings highlight the law and sub-issues in “Disclaimer in the specification” and “Disclaimer during prosecution,” while in OBVIOUSNESS, new subheadings highlight the law and sub-issues relating to motivation to combine or modify prior art, including a subsection entitled “KSR rules of obviousness applied.”          

Since the October 23 posting, the Federal Circuit issued four (4) precedential patent law opinions and orders.  The law and issues from these cases – which The IP Law Outline highlights in red to distinguish them from the earlier cases – include: CLAIM CONSTRUCTION (de novo standard of review, and lack of deference to a district court’s claim construction - Judge Moore (joined by Chief Judge Rader) and Judge O’Malley dissenting separately from the court’s denial of en banc review of the court’s de novo standard of review under Cybor (en banc) of a district court’s claim construction, and arguing that because claim construction is a mixed question of law and fact the district court’s construction should be given deference on appeal (pages 357-58), and interpreting claim terms based on the specification – terms given their plain and ordinary meaning, absent a disclaimer or lexicography, vs. limiting terms to the scope of the actual invention disclosed (pages 772-78)); INFRINGEMENT (separate claim elements were not required to be separate structures for literal infringement (pages 812-14), and an apparatus claim reciting functional limitations was not infringed by an accused device that was merely capable of being modified or configured to infringe) (pages 871-75)); WILLFUL INFRINGEMENT (addressing the objective reasonableness of infringement defenses for avoiding willfulness (J. Dyk, dissenting) (pages 975-83)); REASONABLE ROYALTY DAMAGES (affirming jury award based on the patentee’s theory of damages (pages 996, 1026-27, 1030-34, 1040-47)); COSTS (e-discovery, databases (pages 1051-55)); INDEFINITENESS (corresponding structure (algorithm) in the specification for a computer-implemented means-plus-function limitation may be described in prose (pages 1409, 1426-35)); and INEQUITABLE CONDUCT (no materiality or affirmative egregious misconduct after Therasense (en banc) for failing to update a petition to make special (pages 1540, 1555, 1564, 1624)). 

In nonprecedential patent law opinions, the law and issues include: INDUCING INFRINGEMENT (direct infringement was proven by circumstantial evidence (J. Prost, dissenting) (pages 829-36)); PERMANENT INJUNCTIONS (irreparable harm and inadequacy of damages supported injunction (pages 1074-76, 1081-89)); PATENTABLE SUBJECT MATTER (page 1181); OBVIOUSNESS (pages 1301-03, 1326-31, 1380-82); LEVEL OF ORDINARY SKILL IN THE ART (must determine first before assessing the sufficiency of inventor-expert testimony (pages 1285-88, 1794-95, 1806-07)); STANDING TO SUE (all co-owners must be joined as plaintiffs (pages 85-89), and automatic assignment vs. agreement to assign in the future (pages 94-100)); and the FEDERAL MEDIATION PRIVILEGE (arbitration agreements and related information from a prior litigation did not relate to mediation and were discoverable (pages 1734-36)).

In a nonprecedential trademark law opinion, the law and issues include: LIKELIHOOD OF CONFUSION and PROVING PRIORITY OF USE (pages 1899-1906, 1921-26).   
  

The IP Law Outline
(click here)
Takes a moment.

Table of Cases
(click here)


Disclaimer and Copyright Notice
(click here)