Patent Case Management Judicial Guide 2009

The Federal Judicial Center published a “Patent Case Management Judicial Guide”  that is intended to be a guide for district judges.  This provides a good overview of the trial process from the judge’s point of view.  Chapter 11 is a primer on patent law.   The guide is free and available online here as a pdf.
The guide is described as:   
A comprehensive, user-friendly, and practical judicial guide for managing patent cases. …..  In addition, patent cases often entail distinctive and difficult discovery issues, extensive use of experts, and particularly complex dispositive and pretrial motion practice. The authors surveyed federal judges and describe their approaches and best practices for these and other aspects of patent case management.

The following link is to the Federal Judicial Center publication in PDF format.
Link or download

WIPO Magazine - Special Edition: IP Litigation Costs

This edition of the bi-monthly World Intellectual Property Organization  (WIPO) magazine discuses international IP ligation costs.

USPTO Memo 1/27/10 on overcoming 101 rejections for computer readable media claims by amending claims to add “non-transitory”

The USPTO published a memo (dated 1/27/10) by Director Kappos suggesting that applicants can overcome 101 rejections for computer readable media claims by amending the claims to to add the limitation  “non-transitory" to the media.  This is for cases where specification supports a viable “non-transitory” embodiment. 

New USPTO Examiner Count System Went Into Effect Last Week

In a change that could have a significant impact on US patent prosecution and patent quality, the USPTO implemented changes into the “count system”- the time and measurement system examiners are paid and measured on.  This effects how much time an examiner will spend on a task and how much she is rewarded for an outcome.

USPTO launches “Inventors Eye” - a new electronic newsletter for independent inventors

The USPTO Launched the  “Inventors Eye”, a new bi0monthly electronic publication. Inventors Eye is for and about America’s independent and small entity inventor community.
The Inventors Eye will cover tips on working with the USPTO; events, organizations and meetings of interest to the community; issues that impact independent and small entity inventors; and stories about successful inventors.

Products sold “Free on Board” or “f.o.b.” Hong Kong found sold in US under 271(a) where intended for retail sale within US

SEB S.B., and  T-Fal v. Montgomery Ward & Co., 2009-1099, -1108, –1119 (Fed. Cir. 2010)

Products sold “Free on Board” or “f.o.b.” Hong Kong found "sold in US" under 271(a) where intended for retail sale within US.

Section 271(a) makes it an act of infringement to “without authority make[], use[],
offer[] to sell, or sell[] any patented invention, within the United States.”  Op. p. 20.

Pentalapha (accused infringer) “sold these deep fryers to its three customers free on board Hong Kong or mainland China. “Free on board,” or “f.o.b.,” is a “method of shipment whereby goods are delivered at a designated location, usually a transportation depot, at which legal title and thus the risk of loss passes from seller to buyer.” Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1358 n.1 (Fed. Cir. 2008).” Op. p. 4.
Pentalpha argued that the sale occurred overseas because the products were delivered to the buyers f.o.b. Hong Kong or China.

Fed. Cir. Clarifies that for infringement, product-by process claims are limited by the process

In  Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282, No. 07-1400, –1406,  (Fed. Cir. May 19, 2009), the Federal Circuit held that “process terms in product-by-process claims serve as limitations in determining infringement.”  That is a product-by process claim is interpreted as a process claim for determining infringement and that a product-by process claim is not infringed by products made using non-claimed processes.  With this decision, the court settled a long standing split in the court’s precedent. This case appears to reduce the value of product-by process claims.