LexisNexis Patent Law: Patent Law

Laurie Axford on Injunction Blocking PTO Continuation and Claim Rules

Laurie A. Axford — Fri, 04 Apr 2008 16:09:42 GMT

A preliminary injunction issued in Tafas v. Dudas, 2007 U.S. Dist. LEXIS 80474 (E.D. Va. Oct. 31, 2007), blocked the U.S. Patent and Trademark Office from implementing the Final Rules on Continuations and Claims that were set to go into effect November 1, 2007. On April 1, 2008, Judge Cacheris made the injunction permanent, and voided the rules. In her expert commentary dis

Lawrence M. Sung on How the Federal Circuit Looks at a Pre-Filing Investigation of Patent Infringement When Reviewing a Motion for Attorney Fees under 35 U.S.C. 285

Lawrence M. Sung, Ph.D. — Tue, 01 Apr 2008 17:29:04 GMT

The adequacy of a patentee plaintiff’s pre-infringement suit investigation follows one path in the normal case, but quite a different path when a motion for attorney fees under 35 U.S.C. § 285 is in play. This commentary, written by Lawrence M. Sung, Ph.D., addresses the potential unintended consequences of seeking redress for an inadequate pre-filing investigation solely under the rubric of a motion

Mary LaFrance on Software as a "Component" of a Patented Invention under Section 271(f): Microsoft Corp. v. AT&T Corp. 127 S.Ct. 1746, 167 L.Ed.2d 737, 2007 U.S. LEXIS 4744 (2007)

Mary LaFrance — Fri, 07 Mar 2008 12:45:44 GMT

When software object code supplied from the United States is copied overseas, and only the copies are installed in computers so as to produce a programmed computer that would infringe a patent if assembled in the United States, the Supreme Court held in Microsoft v. AT&T that the exporter has not "supplied " a "component" of a patented invention for assembly overseas. As s

Eric E. Bensen on the Patent Reform Act of 2007

Eric E Bensen — Thu, 21 Feb 2008 10:59:55 GMT

If enacted, the Patent Reform Act of 2007, potentially the first major reform of the patent laws in more than 50 years, will have major effects on patent law. In an exhaustive analysis of the Act, Eric E. Bensen, co-author of Milgrim on Licensing and Milgrim on Trade Secrets, writes:

’s ratification of the London Agreement in January, the Agreement is slated to take effect on May 1, 2008. Laurie Axford discusses the Agreement, which will reduce translation costs for validating granted European Patents by as much as half. Ms. Axford writes:

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Mary LaFrance on Identifying the Ordinary Observer for Purposes of Determining Design Patent Infringement: Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007)

Mary LaFrance — Mon, 28 Jan 2008 16:49:14 GMT

In order to infringe a design patent, an accused design must be substantially similar to the patented design, as seen through the eyes of the hypothetical "ordinary observer." Case law establishes that the ordinary observer normally is a purchaser of the product in question, but the chain of commerce for a particular product may involve purchasers at several levels. Law Professor Mary LaFr

John S. Paniaguas on the Patentability of Tax Strategies and the Return to State Street Bank & Trust v. Signature Financial Group

John S. Paniaguas — Mon, 28 Jan 2008 16:48:30 GMT

The decision in State Street Bank & Trust v. Signature Financial Group, 149 F. 3d 1368 (Fed. Cir. 1998), has spawned the issuance of utility patents on business methods, including patents covering tax strategies. Tax strategy patents have become an ever-increasing source of anxiety for tax practitioners and pose a sig

Christopher A. Harkins, Here Today, Gone To-Morrow: Lessons of How to Avoid Losing in Bankruptcy the Standing to Sue for Patent Infringement after Morrow v. Microsoft

Christopher A. Harkins — Mon, 28 Jan 2008 16:48:30 GMT

Christopher A. Harkins discusses the recent Federal Circuit of Morrow v. Microsoft, which held that a trust established to enforce the patent in issue lacked standing to sue an infringer (or even join as a co-plaintiff) in a patent infringement lawsuit. Mr. Harkins writes:

In County Materials Corp. v. Allan Block Corp., No. 06-2857, 2007 U.S. App. LEXIS 22216 (7th Cir. Sep. 18, 2007), the Seventh Circuit found that a post-termination covenant not to compete in an exclusive patent and know-how license constituted patent misuse. Eric E. Bensen discusses the case and the Sevent

Mary LaFrance on Enforcement of Contractual Royalty Obligations After Patent Expiration: Zila v. Tinnell, 502 F.3d 1014 (9th Cir. 2007)

Mary LaFrance — Mon, 28 Jan 2008 16:48:30 GMT

In spite of two Supreme Court precedents, uncertainty continues to surround the enforceability of patent licensing agreements requiring the licensee to pay royalties after the licensed patents expire. Law Professor Mary LaFrance examines the Ninth Circuit's 2007 decision in Zila v. Tinnell, which addressed the question of whether, and to what extent, a licensee can be required to pay post-expiration

Bensen on International Gamco v. Multimedia Games

Eric E Bensen — Mon, 28 Jan 2008 16:48:30 GMT

In International Gamco, the Federal Circuit ruled that an exclusive licensee of a patent whose license was limited to a field of use could not sue in its own name for the patent's infringement without joining the patentee Eric E. Bensen examines the decision's implications, and writes:

The Supreme Court's decision in eBay v. MercExchange changed the playing field for patentees seeking permanent injunctions against infringers, rejecting the Federal Circuit's longstanding position that permanent injunctions should be granted absent exceptional circumstances, and requiring instead that courts apply traditional principles of equity. Law Professor Mary La