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Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 2008-1403 (Fed. Cir. Dec. 17, 2010).

Winston & Strawn LLP
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USA
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December 28 2010

The inclusion of mental steps that are not separately patentable in a method claim does not negate patentability of the claim as a whole when other required steps are of a "transformative nature."

Shum v. Intel Corp., No. 09-1385, -1419 (Fed. Cir. Dec. 22, 2010)

Winston & Strawn LLP
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USA
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December 28 2010

The "prevailing party," for purposes of determining an award of court costs under Rule 54, is limited to only one party, which party must have received relief on the merits that materially alters the legal relationship between the parties

Akamai Techs., Inc. v. Limelight Networks, Inc., 2009-1372, -1380, -1416, -1417 (Fed. Cir. Dec. 20, 2010).

Winston & Strawn LLP
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USA
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December 28 2010

Joint infringement can only be established when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps

Lazare Kaplan Int’l, Inc., v. Photoscribe Tech., Inc., No. 2009-1251 (Fed. Cir. Dec. 22, 2010).

Winston & Strawn LLP
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USA
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December 28 2010

Intent to deceive for inequitable conduct cannot be established by rejecting a prosecuting attorney's explanation based on an erroneous understanding of the law

Shum v. Intel Corp., No. 09-1385, -1419 (Fed. Cir. Dec. 22, 2010).

Winston & Strawn LLP
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USA
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December 28 2010

The named inventors on an issued patent are presumed correct; co-inventors make a significant contribution (1) to the conception or reduction to practice of the invention, that is (2) not insignificant in quality when measured against the dimension of the full invention

WiAV Solutions LLC v. Motorola, Inc., No. 2010-1266 (Fed. Cir. Dec. 22, 2010).

Winston & Strawn LLP
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USA
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December 28 2010

An exclusive licensee with legal injury and the right to exclude the alleged infringer has constitutional standing to sue for infringement even though third parties have rights to sublicense the patent for other activities

Tokai Corp. v. Easton Enterprises, Inc., No. 2010-1057, -1116 (Fed. Cir. Jan. 31, 2011)

Winston & Strawn LLP
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USA
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February 14 2011

The nature of the problem provided the motivation to combine prior art references and establish a strong prima facie case of obviousness that could not be overcome by secondary indicia of non-obviousness

The secondary considerations of non-obviousness of commercial success, failure of others, and industry praise must be linked to the claimed invention, not pre-existing market share

Winston & Strawn LLP
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USA
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August 31 2010

Patentee sued for infringement of a patent for a “bundle breaker” used for breaking multiple, uneven bundles of corrugated board

One system that accomplishes a function mechanically and another system that accomplishes the same function using magnetic force function in fundamentally different ways for purposes of determining infringement

Winston & Strawn LLP
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USA
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September 15 2010

The accused infringers appealed from a final determination of the International Trade Commission (“ITC”) that certain of their ground fault circuit interrupters (“GFCIs”) infringed various patents and that those patents were not invalid

A patentee does not misuse his patent when he offers to license a patent while inducing a third party not to license its separate patent covering competing technology

Winston & Strawn LLP
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USA
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September 15 2010

The patentee and its joint venture partner established standards for compact disks

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