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Archive for December, 2010

CAFC Weekly: December 24, 2010

by Orlando Lopez

“Twas the week before Christmas” and the CAFC handed down 5 precedential decisions, one of them clarifying the amount of control by one of the infringing parties over the other, required for there to be joint infringement. Another decision defines an exclusive licensee’s standing to sue when there were prior licenses granted. Additionally, there was a case related to inventorship, a case related to claim construction, as well as a gem of a case (or a case about gems) related to claim construction and inequitable conduct, which also included corroboration of testimony and preserving the right to appeal. Read the rest of this entry »

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Costco v. Omega: Extraterritoriality lives to fight another day

by Orlando Lopez

In a 4 to 4 Per Curiam decision, the Supreme Court affirmed the 9th Circuit decision stating that there is no first sale defense for acquirers of gray market goods made abroad. The Supreme Court decision is not precedential and allows another attack on extraterritoriality, that is, the lack of IP rights exhaustion when acquiring goods made abroad. The present rulings, the 9th Circuit decision in Omega v. Costco and the Federal Circuit decisions on effect of extraterritoriality on patents, leave the gray market sellers and the refurbishers of patented products without protection if the goods are made abroad . While this outcome appears to be a fair outcome, it has an impact on other sellers of goods, such as Intel. The Supreme Court’s non-decision leaves the door open for reviewing the issue some other time. So, Extraterritoriality, do not put away the fighting gloves!

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CAFC Weekly: December 17, 2010

by Orlando Lopez

This week, the one precedential opinion and the one precedential order relate to patentatability of method claims after Bilski (the CAFC considered an opinion vacated and remanded by the Supreme Court) and another look at transfer of venue. Read the rest of this entry »

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CAFC Weekly: December 10, 2010

by Orlando Lopez

The precedential opinions of this week include the first opinion in which the CAFC, after Bilski, provides some guidance as to what is or is not an abstract idea, an opinion involving obviousness and an opinion providing an example of the effect of prosecution history on claim interpretation.

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The Bayh-Dole Act Turns 30

by Orlando Lopez

With little fanfare, the Bayh-Dole Act turned 30 years old on December 12, 2010.  If we were back in the 60’s, we would be reminded of the statement “never trust a person over 30,” but these are different times and the Bayh-Dole Act has more than proven its usefulness.  By allowing universities (and small businesses and not-for-profit organizations) to retain title to inventions generated under federally funded programs, the Bayh-Dole Act sparked the technology transfer process.  Universities such as MIT and Stanford (as well as Wisconsin and others) have spawned a large number of small companies, some of which have grown to be large companies.  While most of us dozed through this birthday celebration, the USPTO provided the cake and marked the occasion.  Director Kappos highlighted the connection between the Bayh-Dole Act and the constitutional basis of the patent system, the promotion of the advancement in both science and commerce.  We join today in celebrating the birthday of the Bayh-Dole Act and wish the Bayh-Dole Act many more happy returns.

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