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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
  • USA
  • June 2 2010

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


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
  • USA
  • 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
  • USA
  • 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
  • USA
  • 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
  • USA
  • June 2 2010

A jury found the patent infringed and valid


A patentee’s rights are only exhausted by a sale within the United States
  • Winston & Strawn LLP
  • USA
  • June 2 2010

The patent involved single use cameras


Where an ambiguous disclosure otherwise might have sufficed to support an earlier priority date, contrary arguments made to persuade an examiner to allow the application may preclude the priority claim
  • Winston & Strawn LLP
  • USA
  • May 11 2010

The district court entered summary judgment in favor of the accused infringer, holding that a patent issuing on a continuation-in-part application related to collapsible storage containers was not entitled to an earlier filing date because material claimed had been disclaimed during prosecution of the priority patent by patentee’s attorney


Tivo, Inc. v. Echostar Corporation, et. al, 2009-1374 (Fed. Cir. March 4, 2010)
  • Winston & Strawn LLP
  • USA
  • March 9 2010

Following an order granting a permanent injunction, an infringer may still be held in contempt of that order despite good faith efforts to achieve a non-infringing design-around; and even if the infringer achieves a non-infringing design-around, it may still be held in contempt for failure to comply with the clear terms of the order


Federal courts have exclusive federal question jurisdiction over legal malpractice claims involving the prosecution of U.S. patent applications
  • Winston & Strawn LLP
  • USA
  • March 9 2010

A patent applicant filed suit against her patent prosecution attorney for negligently failing to file applications under the Patent Cooperation Treaty (which provides a unified procedure for filing a single patent application in multiple countries) and for various acts of negligence relating to the preparation and filing of U.S. patent applications