Donald S. Chisum
 Author, Chisum on Patents and Patent Law Digest
 Co-Founder, Chisum Patent Academy, Inc.

Published:

No. 117:
Claims: Definiteness and Other Issues (Entire Chapter Eight)

No. 118:
Permanent injunctions: eBay Inc.(2006) and a survey of subsequent decisions (Section 20.04[2])

No. 119:
Patent Eligible Subject Matter: Bilski (En banc 2008) (Section 1.03[6][k]))

No. 120:  
Willful Infringement and Enhanced Damages:  Seagate and Subsequent Decisions (Section 20.03[4][b])
    
In Process:

No. 121:
Subject Matter Jurisdiction
 1. Suits Arising Under Patent Law (Section 21.02[1])
 2. Declaratory Judgments: MedImmune (US 2007) and Subsequent Decisions (Section 21.02[1][d]).

No. 122:
A Potpourri
 1. Export of Components (Section 271(f)): Microsoft (US 2007) and Cardiac Pacemakers (FC En banc 2009) (Section 16.02[7])
 2. Patent Exhaustion from Sale of Components:  Quanta Computer (US 2008) (Section 16.03[2][a][i])
 3. Infringement of Product-by-Process Claims:  Abbott Laboratories (FC en banc 2009) Closes a Schism (Section 8.05)
 4.  Patenting Genes After the Supreme Court’s KSR Decision on Obviousness:  Kubin (FC Panel 2009)  (Section 5.04[6][g][iii])

No. 123:
Another Potpourri
 1.  Inequitable Conduct
  a. Heightened Standard for Inferring Intent: Star Scientific (FC Panel 2008) (Section 19.03[5][a])
  b. Heightened  Standard for Pleading Inequitable Conduct: Exergen (Panel 2009) (Section 19.03[6][b][ii])
 2.  Damages and the Whole Market Value Rule: Lucent Technologies (2009) (Section 20.03[3][b][x]).
Looming Topics:

 1. Supreme Court’s Bilski-To-Be (The Patent Case of the Century?)

 2. Written Description: Federal Circuit’s En banc Ariad Pharms. v. Eli Lilly (Rehearing en banc granted Aug. 21, 2009).

 3. Utility and Enablement with Claims to Methods of Treatment: Janssen Pharmaceutica N.V. v. Teva Pharmaceuticals USA, Inc., 2009 U.S. App. LEXIS 21166 (Sept. 25, 2009) (Harbinger of a Patent Restrictive Trend in the Federal Circuit?)

 4. Obviousness-type Double Patenting

MAJOR ISSUES:  Reexamination; Substantial New Question of Patentability.

The Federal Circuit’s DBC decision addresses the “substantial new question of patentability” standard for PTO reexamination of a patent. For discussion of this issue, see Chisum Patent Law Digest § 3413.20; Chisum on Patents § 11.07[4][c], § 11.07[4][d][ix].

2. Obviousness Standard of Patentability; “Commecial Success” as Rebutting Prima Facie Obviousness. DBC also addresses on the merits the obviousness standard of patentability, in particular, the use of “commercial success” to rebut prima facie obviousness. For discussion of this issue, see Chisum Patent Law Digest § 1533, 1563; Chisum on Patents § 5.05[2].

OTHER ISSUES. DBC discusses the status of Board of Appeals judges under the Constitution’s “Appointments Clause.” This issue is not of long-term practical importance.

MAJOR ISSUES: United States Government–Use for the Government with its “Authorization or Consent.”

A patent concerned a method for detecing fraudulent bank checks.  uspatno6792110  A district court lacked jurisdiction over a suit by a patent owner alleged infringing acts by regional Federal Reserve Banks, which had adopted an accused infringer’s check authorization system to verify U.S. Treasury checks.. Because the alleged acts were “for the United States” and with the “authorization or consent” of the United States Treasury, the patent owner’s suit can only be pursued against the United States in the Court of Federal Claims.  See 28 U.S.C. Section 1498(a).

For a discussion of suits against government contractors, see Chisum Patent Law Digest § 8151;
Chisum on Patents § 16.06[3].

MAJOR ISSUES:  Standing–Ownership Counterclaim by Accused Infringer–State Statute of Limitations
Assignment Agreement–Assignment of Present Interest in Future Inventions–Equitable Title–Earlier Agreement to Assign Right in the Future–Bona Fide Purchaser–Bayh-Dole Act

Stanford University sued a company, Roche, alleging infringement of a patent that named University researchers as inventors.  uspatno7129041 Stanford lacked standing to sue because the company partly owned the patent by virtue of an assignment agreement by one of the inventors (Holodniy).  The agreement was a present assignment of future rights and transferred equitable title.  The equitable title vested as legal title upon the inventor’s later invention, which was not later than the filing of the application for the patent.  The inventor purported to assign his rights to Stanford, but he had no rights to assign.  Stanford was not a bona fide purchaser because it was charged with the inventor’s knowledge.  Roche’s counterclaim for ownership was barred by the applicable state statute of limitations.  The statute did not preclude Roche from challenging Stanford’s standing to sue.
    
For a discussion of standing to sue and co-ownership, see Chisum Patent Law Digest § 1860, § 9300; Chisum on Patents § 21.03[3][d].