In The Forest Group, Inc. v. Bon Tool Company, 590 F.3d 1295 (Fed. Cir. 2009), the Federal Circuit held that penalties must be imposed on a per article basis in false marking cases brought under Section 292(a) of the Patent Act.  Thus, district courts have discretion to assess fines up to $500 per article, although they should not impose fines that are disproportionately large. continue reading...

In re Robert Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009), involves an appeal of a decision of the U.S. Patent and Trademark Office ("PTO"), Board of Patent Appeals and Interferences (the "Board"), sustaining an examiner’s rejection of certain claims in Robert J. Skvorecz’s application to issue U.S. Patent No. 5,996,948.  continue reading...

In Board of Trustees of the Leland Stanford Junior University, et al., v. Roche Molecular Systems, et al., 583 F.3d 832 (Fed. Cir. 2009), the Federal Circuit held that the term “agree to assign,” as used in a patent assignment clause, did not constitute an immediate transfer of the assignor-inventor’s patent rights to the assignee.  The Court held, instead, that such language conveys only the intent to assign patent rights at a later, unspecified time.  The holding underscores the importance of carefully drafting language in patent assignment agreements.  continue reading...

In Aristocrat Tech. Australia Pty. Ltd. v. International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008), the Federal Circuit clarified the “means-plus-function” doctrine, which is codified in paragraph six of 35 U.S.C. § 112: 

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. continue reading...