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USPTO PROPOSES AMENDING RULE 1.56 TO DEFINE MATERIALITY IN ACCORDANCE WITH THERASENSE

USPTO PROPOSES AMENDING RULE 1.56 TO DEFINE MATERIALITY IN ACCORDANCE WITH THERASENSE

By • on July 26, 2011

On July 21, 2011 the USPTO published a notice of proposed rulemaking to amend Rule 56 (37 CFR §1.56) to define materiality in accordance with the Federal Circuit’s en banc decision in as the Federal Circuit’s en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., — F.3d. — (Fed. Cir. 2011).  A similar amendment is proposed

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Launch of .XXX Domain Names – Blocking Registration of Trademarks as Domains

Launch of .XXX Domain Names – Blocking Registration of Trademarks as Domains

By • on July 20, 2011

Summary: This September, the new .XXX registry will begin accepting registrations and protection against registrations, that is, requests to block registration of non-adult industry trademarks as domains (example: blocking registration of HDP.xxx). As with most extension launches, applications will be

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Does the Federal Circuit “mean” it this time?  Adding confusion to when claim language lacking the word “means” should be subject to means-plus-function analysis.

Does the Federal Circuit “mean” it this time? Adding confusion to when claim language lacking the word “means” should be subject to means-plus-function analysis.

By • on June 17, 2011

Inventio AG v. ThyssenKrupp Elevators Americas Corp., No. 2010-1525 (Fed. Cir. June 15, 2011). The Federal Circuit long ago answered whether a functional claim term that lacked structure should be analyzed as a means-plus-function limitation, even if the word “means” is missing.  “Of course,”

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A possibility among a limited number is not necessarily a predictable solution; teaching away need not be specific.

A possibility among a limited number is not necessarily a predictable solution; teaching away need not be specific.

By • on June 17, 2011

Spectralytics, Inc. v. Cordis Corporation, Nos. 2009-1564, 2010-1004 (Fed. Cir. June 13, 2011). This decision’s treatment of  an accused infringer’s “teaching away” and “predictable solution” arguments is of interest, as are the court’s comments in remanding for reconsideration of award

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Microsoft Corp. v. i4i Limited Partnership, U.S., No. 10-290 (June 9, 2011).

Microsoft Corp. v. i4i Limited Partnership, U.S., No. 10-290 (June 9, 2011).

By • on June 10, 2011

The Supreme Court unanimously upheld a clear and convincing standard for proving a patent invalid, whether or not the evidence had been considered by the patent examiner. Before the Patent Act of 1952, the Court required clear and convincing evidence of invalidity. Radio Corp. of America v. Radio Engineering

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Stanford v. Roche Molecular Systems, Inc.

Stanford v. Roche Molecular Systems, Inc.

By • on June 10, 2011

Stanford v. Roche Molecular Systems, Inc., 563 U.S. — (2011), the Supreme Court, in its second patent case in a week, held that the Bayh-Dole Act does not automatically vest title to federally-funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.  

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Global-Tech Appliances, Inc. v. SEB SA – The Supreme Court Addresses Inducement of Patent Infringement

Global-Tech Appliances, Inc. v. SEB SA – The Supreme Court Addresses Inducement of Patent Infringement

By • on June 2, 2011

In Global-Tech Appliances, Inc. v. SEB SA, the Supreme Court held that inducement of infringement under 35 USC 271(B) requires knowledge that the induced acts constitute patent infringement. This means that the alleged inducer must know (1) that the patent exists and (2) that the induced acts constitute

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Therasense’s Stringent Inequitable Conduct Test

Therasense’s Stringent Inequitable Conduct Test

By • on May 27, 2011

Therasense, Inc. v. Becton, Dickinson and Co., Nos. 2008-1511, -1512, -1513, -1514, -1595  (Fed. Cir. May 25, 2011). Determined to end overuse of inequitable conduct charges, the en banc Therasense court tightened the doctrine, abolishing the “sliding scale” rule and requiring an accused infringer

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TTAB: Prompt Filing of Supplemental Response Cures Procedural Deficiency in Expert Disclosures

TTAB: Prompt Filing of Supplemental Response Cures Procedural Deficiency in Expert Disclosures

By • on May 4, 2011

TTAB: Prompt Filing of Supplemental Response Cures Procedural Deficiency in Expert Disclosures The Trademark Trial and Appeal Board (“Board”) held that Respondent’s timely-filed expert testimony should not be excluded for procedural deficiencies when those deficiencies were promptly corrected before

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Providing Support for Generous Construction of a Claimed Range

Providing Support for Generous Construction of a Claimed Range

By • on April 22, 2011

Lexion Medical, LLC v. Northgate Technologies, Inc., 2009-1494 (Fed. Cir. Apr. 22, 2011). Writing for the court, Chief Judge Rader handed patent prosecutors a checklist for getting the most out of a numerical range.  First, “[t]his court prefers a claim interpretation that harmonizes the various elements

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