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Patent Law Summaries

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USPTO Identifies New Applicability Date of Certain Provisions in "Claims and Continuations" Final Rule

Clarification of Patent Regulations Currently in Effect, and Revision in Applicability Date of Provisions on Patent Applications
PTO–P–2008–0035, 08/07/2008

USPTO Issues Final Rule To Adjust Patent Fees

37 CFR Parts 1 and 41, Docket No. PTO–C02008–0004, RIN 0651–AC21, 08/14/2008

USPTO Publishes New Rules regarding Ex Parte Appeals Before the Board of Patent Appeals and Interferences

37 CFR Part 41, [Docket No. PTO–P–2007–0006], RIN 0651–AC12, 06/10/2008

Revisions and Technical Corrections Affecting Requirements for Reexamination

Docket No.: PTO-P-2005-0016, 37 CFR Parts 1 and 41, RIN 0651-AB77, 04/16/2007

Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103

Docket No.: PTO–P–2007–0031, 10/10/2007

Patent Law Commentaries

Following are Patent Law Commentaries elaborating on the significance of the most important of the Patent Law Summaries.

Page 1 of 2 of Patent Law Commentaries  1 2 >

Quanta Computer v. LG Electronics: Reviving Exhaustion, Applying It to Method Patents

Quanta Computer v. LG Electronics
Posted: 08/15/2008

Commentary: In the case Quanta Computer v. LG Electronics, ___ U.S. ____, 128 S.Ct. 2109 (2008), the United States Supreme Court clarifies and expands upon its holding in United States v. Univis Lens Co. In Univis, the court held that a patent is exhausted upon the sale of unfinished components that substantially embody the patent and which have no use except to practice the patent. In Quanta, the court clarified that the same analysis applies to process or method patents, not just product patents: When a component substantially embodies the process and cannot be used for any purpose other than to practice the patent, the process patent is exhausted upon sale of that component. The decision makes it more difficult for patentees to extract royalties from multiple parties for the same device. However, it revitalizes the integrity of the exhaustion doctrine and provides more certainty for downstream purchasers. More...

Related summary: Supreme Court Reverses Federal Circuit’s Ruling, Finds in Favor of Quanta in LG’s Computer Technology Patent Suit

Acumed II Addresses the Issue of Claim Preclusion and When a Patent Claim Could Have Been Brought

Acumed, LLC v. Stryker Corp., et al.
Posted: 05/20/2008

Commentary: In the recent case of Acumed, LLC v. Stryker Corp.,et al., (No. 2007-1115) (Fed. Cir., May 13, 2008) (“Acumed II”), the Federal Circuit addressed the meaning and application of language barring re-litigation of claims that “could have been brought” in a prior patent infringement case. More...

Related summary: Federal Circuit Reverses District Court’s Ruling in Acumed v. Stryker, Remands Case

Agrizap and Ortho-McNeil: Two Sides of Post-KSR Obviousness

Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., et al.
Posted: 05/16/2008

Commentary: In KSR v. Teleflex, 550 U.S. ____, 127 S. Ct. 1727 (2007), the U.S. Supreme Court broadened the applicable test in determining whether an invention is “obvious.” As predicted by patent law pundits, the KSR decision was followed by a number of cases in which infringers defended their actions – and won – by having the patent in question declared invalid for obviousness under this new standard. The Court of Appeals for the Federal Circuit (the CAFC) recently heard and decided two separate cases that addressed the issue of obviousness post-KSR. These cases shed further light on the new standard for determining obviousness. While the results are quite different, the lessons for practitioners are, ultimately, the same. More...

Related summary: Federal Circuit Affirms Validity of Ortho-McNeil’s Patent On Epilepsy Drug Topomax

Judkins v. HT Window Fashion: Can’t Stop a Patent Holder from Contacting Your Clients About Possible Infringement

Judkins v. HT Window Fashion Corp.
Posted: 05/13/2008

Commentary: When a patent-holder discovers infringement, it’s not unreasonable for him to want to notify the alleged infringer’s clients of the infringement. Of course the alleged infringer would prefer that this communication with its clients not take place. But, as the Judkins case instructs, it will be nearly impossible for an alleged infringer to stop a patent holder from contacting its clients. More...

Related summary: Patent Owners Allowed to Warn Buyers about Competitor's Infringing Products: Judkins v. HT Window Fashion Corp.

Tafas v. Dudas: USPTO’s Efforts to Limit Patent Applicant Rights Are Void

Tafas v. Dudas, et al.
Posted: 05/12/2008

Commentary: In an effort to attack its notorious backlog, the USPTO enacted a group of rule changes that placed limits on, among other things, the number of claims a patent applicant could include and the number of times an applicant could amend and continue his application. Traditionally, patent applicants could take unlimited bites at the apple in their pursuit of their patent. In Tafas, the court struck down the rule changes as null and void, and exceeding the scope of the USPTO’s authority. While the Office has the power to enact procedural rules regarding the process, it cannot enact substantive rules – these rules are substantive since they dramatically alter existing policy and the rights and obligations of patent applicants. More...

Related summary: USPTO Rules Are Void For Being Contrary to Law, VA District Court Declares


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Companies Mentioned

Patent Law

The following companies are mentioned in Patent Law Updates:

Stryker Corp.

Boston Scientific Corp.

United States Patent and Trademark Office

Smithkline Beecham Corp. (d.b.a. GlaxoSmithKline, plc.)

HT Window Fashion Corp.

Mylan Laboratories, Inc.

Mylan Pharmaceutical, Inc.

Ortho-McNeil Pharmaceutical, Inc.

Acumed, LLC

Stryker Sales Corp.

McKesson Information Solutions, Inc.

Stryker Orthopaedics

Bridge Medical, Inc.

Howmedica Osteonics Corp.

LG Electronics, Inc.

Quanta Computer, Inc.

Nokia, Inc.

Scimed Life Systems Inc.

Mayhew Steel Products, Inc.

Boston Scientific Scimed, Inc.

Sendo America, Inc.

Matthews Collins Shepherd & McKay, P.A.

Medtronic Vascular, Inc.

Siemens Communications, Inc.

Apotex, Inc.

Medtronic USA, Inc.

NEC Corporation of America

Apotex Corp.

Medtronic, Inc.

Sony Ericcson Mobile Communications (USA), Inc.

Roche Palo Alto LLC

Medtronic Vascular Galway, Ltd.

Sony Ericcson Mobile Communications AG

Allergan, Inc.

Bancorp Services, LLC

Panasonic Corporation of North America

Benefit Finance Partners, LLC

Curitel Communications, Inc.

Thomson Corp. d.b.a. Thomson Financial LLC and Thomson Financial Municipals Group

Metropolitan Life Insurance Company

Samsung Telecommunications America LLP

I-Deal, LLC

Coin Acceptors, Inc.

Samsung Electronics America, Inc.

Muniauction, Inc. d.b.a. Grant Street Group

Mars, Inc.

TCL & Alcatel Mobile Phones Limited

Dr. Reddy’s Laboratories, Ltd.

Mars Electronics International, Inc.

Audiovox Communications Corp.

Additional Resources

Patent Law

Patent Act (pdf, 1.4mb)

Patent Rules (pdf, 3.4mb)

Manual for Patent Examining Procedure (pdf, 56mb)

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