The IP Law Outline and Table of Cases are current through January 31, 2012.  See the links below.

The “hottest” developments from the Federal Circuit cases since the November 30, 2011 posting (citing to The IP Law Outline below) are:

1) The Federal Circuit’s grant of en banc review of Marine Polymer, 9/26/11, in which a split panel (Judge Lourie, dissenting) held that the intervening rights defense to infringement applied when the patentee made disclaiming arguments during reexamination, without amending the claims (pages 2019-21);

2) The Federal Circuit’s holding that a computer-implemented business method claim was not patent-eligible under Section 101 merely by reciting in the preamble that the method was “computer-aided” – distinguishing Ultramercial, 9/15/11 (pages 1186, 1196-97, 1202-04, 1217-19);

3) The Federal Circuit’s affirmance of the district court’s $4.7 million award of attorney and expert witness fees based on bad faith litigation, which included the patentee’s unreasonable claim construction that ignored the patent and prosecution history, and reliance on unreliable and inadmissible expert testimony (pages 1115-16, 1131-44, 1677-81);

4) The Federal Circuit’s reversal of a $56 million judgment, ruling that to prove novelty or a lack of anticipation, expert testimony is not a substitute for the actual disclosure of a prior art reference, viewed as a whole (pages 1220-25);

5) The Federal Circuit’s ruling that the party asserting prior invention under Section 102(g) must prove that it appreciated what it had made, but does not need to know everything about how or why its invention worked, or conceive of its invention using the same words that the patentee uses to claim it (pages 1278-83); and

6) The Federal Circuit affirming lack of declaratory judgment jurisdiction over invalidity counterclaims with respect to withdrawn or unasserted patent claims (pages 112-36).


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The IP Law Outline
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Table of Cases
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