The IP Beacon, May 2010

05/07/2010

The IP Beacon is a Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law. Articles featured in the May 2010 issue include:

HP v. Acceleron: Staring up the Patent Infringement Gun Barrel Without Risking Your Company’s Life

Recently, in Hewlett-Packard Co. v. Acceleron LLC, the Federal Circuit made it easier for companies facing infringement suits to establish declaratory judgment jurisdiction against non-practicing entities. In Acceleron, the Federal Circuit found that DJ jurisdiction was triggered when NPE Acceleron wrote to HP to “call . . . attention” to Acceleron’s patent and to invite HP to discuss “the merits of this patent or its relevance to [HP’s] Blade Server products.” While Acceleron is most significant for NPEs and the companies they target, the case also has implications for practicing patent holders and the accused infringers they target.

Patent Reexamination: Trends for the 2010s

In the past year, patent reexamination saw yet another rise in filings, with inter partes requests growing to from 168 in 2008 to 258 in 2009. This article highlights statistics showing the continued importance of reexamination, particularly in an overall litigation strategy. Additionally, recent cases are reviewed that may impact future reexaminations and litigations.

Overview of the Proposed Patent Reform Act of 2010

Members of the U.S. Senate Judiciary Committee reached bipartisan agreement on patent reform legislation, which is being referred to as the Patent Reform Act of 2010. This article summarizes the main changes to U.S. patent law included in the proposed legislation. Highlights include changes on first-inventor-to-file, inventor’s oath or declaration, damages, post-grant review proceedings, supplemental examination, residency of federal circuit judges, “micro entity” definition, funding agreements, travel expenses test program, best mode requirement, district court pilot program and effective date, and rule of construction.

In Giving Crocs its Patent Bite Back, Has the Federal Circuit Increased the Value of all Design Patents?

On February 24, 2010, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit reversed a 2008 ruling by the International Trade Commission, found that Crocs’ design patent was infringed, and provided a guide for determining design patent infringement under the ordinary observer test.

Obviousness-Type Double Patenting as an Invalidity Defense

In case you missed it, there was actually an unstated deadline for filing a terminal disclaimer. To be effective, a terminal disclaimer must be filed before expiration of the patent being disclaimed over. But even a belated terminal disclaimer may not be enough to support an obviousness-type double patenting defense under certain circumstances according to the Federal Circuit. Interestingly, the court need not have addressed terminal disclaimer deadlines at all in view of the ultimate holding that the claims were not invalid for obviousness-type double patenting. In Boehringer Ingelheim Int’l GMBH v. Barr Labs., Inc, the Federal Circuit found a terminal disclaimer filed after expiration of the patent being disclaimed over to be ineffective but decided for other reasons that the claims of the patent in-suit were not invalid for obviousness-type double patenting.

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