RECENT DEVELOPMENTS IN PATENT LAW
NATIONAL COUNCIL OF INTELLECTUAL PROPERTY LAW ASSOCIATIONS
OCTOBER 16, 1991
Edward J. Cabic
Initial cite is to PTCJ volume and page. Last cite is USPQ2d.
Executive Summary

SELECTED CASES OF NEW LAW AND INTEREST


Obviousness
Braat (p. 2) - For an obviousness double patenting rejection it must be 2-way.

Specification - 112
Vas-Cath (p. 3) - Written description requirement is separate and distinct from enablement requirement.

Reissue
Green (p. 4) - Court can not require patentee to go to PTO for a reissue when patentee says there is no error.

Infringement
Symbol Technologies (p. 4) - In first case on Fed.R.Evid. 705, Court permits opinion testimony of expert in infringement patent trials and under �112, para. 6.

Laitram (p. 4) - Presence of some structure in a means plus function claims does not preclude section 112 para. 6.

Arachnid (p. 5) - Party must have legal title to patent during time of infringement to recover money damages.

Slimfold (p. 6) - No infringement under Doctrine of Equivalents if the element does not function in same way.

Court's Powers & Jurisdiction
Acoustical Design (p. 7) - Doctrine of assignor estoppel precludes invalidity defense even if there is a later license back to assignor.

Vaupel (p. 8) - Reissue proceedings are "other litigation" so as to prevent latches and estoppel.

Spectronics (p. 8) - When patentee files a covenant not to sue there is no longer jurisdiction for a declaratory judgment action.

ATTACHMENT E  (page 1 of 8)

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