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In determining inequitable conduct, the withholding of a “highly material” reference alone is not sufficient to establish intent to deceive the Patent Office

Winston & Strawn LLP
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USA
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May 11 2010

The accused infringer alleged that patentee’s failure to disclose an article to the examiner rendered the patents unenforceable due to inequitable conduct

No “prudential reasons” or perceived increases in efficiency can trump the lack of a case or controversy brought about by a covenant not to sue that extinguishes all current and future claims

Winston & Strawn LLP
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USA
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June 2 2010

The alleged infringer brought a declaratory judgment action alleging invalidity and non-infringement of two patents

Hearing Components, Inc. v. Shure, Inc

Winston & Strawn LLP
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USA
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April 6 2010

Not all terms of degree are indefinite; a means-plus-function claim is infringed when the accused device includes a relevant structure that performs the same function in a substantially similar way, resulting in structural equivalency

Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd

Winston & Strawn LLP
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USA
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April 6 2010

In the construction of a means-plus-function claim element under 35 USC 112, 6, the concept of incorporation by reference is insufficient to include a structure in a prior art reference as a corresponding structure

Enzo Biochem, Inc. v. Applera Corp

Winston & Strawn LLP
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USA
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April 6 2010

Claims are not indefinite if the intrinsic evidence provides a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine the scope of the claims, even if some experimentation is required

The description of two embodiments with each tracking the language of different independent claims most reasonably supports different constructions of the same term in the independent claims

Winston & Strawn LLP
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USA
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June 8 2010

The patentee sued for infringement of a patent covering a portable blood separator

A patent’s preamble limits the invention only if it recites essential structure or steps, or is necessary to give life, meaning, and vitality to the claim

Winston & Strawn LLP
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USA
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June 2 2010

The patent-in-suit related to technology intended to decrease the time needed to decode digital television transmissions

Malpractice claims against patent attorneys necessarily rely on federal law because the fiduciary duties owed by patent counsel are governed by federal statutes and the manual of patent examination procedure

Winston & Strawn LLP
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USA
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June 2 2010

The initial controversy before the district court concerned fifteen claims made by the plaintiff-inventorunder a combination of federal and state lawagainst his former patent counsel and employer, alleging the improper listing of a co-inventor on the patent application and improper legal representation of that individual due to the conflicting interests of the plaintiff

The fact that a patentee used equivocal language when communicating with an accused infringer will not prevent a court from applying equitable estoppel

Winston & Strawn LLP
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USA
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June 2 2010

The district court granted the accused infringer’s motion for dismissal on equitable estoppel grounds based on the patentee’s three years of silence after contacting the accused infringer concerning infringement

Oral testimony can be used to prove the scope of a printed publication as an anticipating reference

Winston & Strawn LLP
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USA
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June 2 2010

A jury found the patent infringed and valid

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