Patent case law 2010

1. List of interesting patent case law of 2010
Last updated: 2010-04-23
Previously updated: 2010-03-09
All cases that have been added to the list since the previous update are displayed in RED.
This document contains some interesting case law from 2010 in my opinion and in view of
practical aspects for a patent attorney working in the field of electronics and
telecommunications. Therefore, interesting case law for people working in the chemical or
biotech area has sometimes not been mentioned here. I also try to cover all US patent
precedential decisions of CAFC and BPAI irrespective of their relevance in practice.
The list is a censored list of a more informative list compiled for Ericsson internal use only.
I would of course appreciate any feedback on errors and interesting, missing case law. There
are plenty of countries, whose case law I do not know how to follow. In fact the purpose of
publishing this list is for me to become aware, via your feedback, of case law that I might
find interesting.
Last but not least, a special thanks to all courts and offices that publishes their decisions on
the web as well as public blogers who keep me updated.
Sites and blogs that directly or indirectly have contributed to the cases below are:
United States Court of appeals for the Federal circuit
Patently-O
The 271 Patent Blog
European Patent Office
Reinhold Cohn
Linklaters
Le Conseil D’État et La Jurisdiction Administrative
Der Bundesgerichtshof
Delhi High Court
Dewey & LeBoef IP watch
Patent Prospector
Best regard, Fredrik Egrelius (fredrik.egrelius@ericsson.com)
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EPO
Enlarged Board of Appeal G-decisions

2. G4/08 Language of proceedings/Merial, if PCT-application published in official EPO language
that language must be maintained in the regional phase before EPO
G2/08 Dosage Regime/Abbott Respiratory LLC, G5/83 superseeded and Swiss-type claims
no longer admissible three months after publication of the decision in OJ
G1/07 Method for treatment by surgery/Medi-Physics Inc
France
Interesting cases from the Supreme Administrative Court
(Conseil d'Etat)
No. 320319 Michel Puech v. Centre National de la Recherche Scientifique, right to patent
originating from master thesis conducted as intern at CNRS
Germany
Interesting Federal Court of Justice (Bundesgerichtshof)
decisions
X ZR 27/07 File names/Microsoft Corp, European patent on File name system, see press
release from BGH here
Great Britain
Interesting Court of Appeal decisions 2010

3. Actavis UK Ltd v. Eli Lilly & Co. Ltd, shared cost for unsuccessfully attempting to revocate
patent even if one of the two plaintiffs withdrew his actions before court decision
India
Interesting decisions from the High Court of Delhi
W.P.(C) No. 9126 of 2009 Telefonaktiebolaget LM Ericsson (Publ) v. Union of India & Ors,
application cannot be deemed abandoned when it is rejected
Israel
Committee for Compensation and Royalties
February 2010, Actelis networks v. Yishai Ilani, compensation for invention made by
employee if not waived in agreement with employer
USA
Federal Circuit Precedential decisions
2010-1001 Novo Nordisk A/S and Novo Nordisk, Inc. v. Caraco Pharma. Labs. Ltd. and Sun
Pharma. Industries, Ltd., Hatch-Waxman Act
2009-1543 Hornback v. US, use of invention according to 35 USC § 183 does not include
use after issuance of patent

4. 2009-1504 (reissue) I4I Ltd Partnership and Infrastructures For Information Inc. v. Microsoft
Corp., order here
2009-1471 Clearplay, Inc. v. Max Abecassis and Nissim Corp., lack of jurisdiction
for CAFC over appeal and Christianson test
2009-1418 In re Suitco Surface, Inc, broadest reasonable interpretation
2009-1406 Harari and Mehrotra v. Hollmer and Cleveland, incorporation by reference of an
application without serial number must be ascertainable by the examiner
2009-1395 Davis v. Brouse Mcdowell, L.P.A and Thomson, prove causation between patent
attorney malpractice and possibility of patent protection, expert's naked opinion insufficient
to survive summary judgement
2009-1374 Tivo Inc. v. Echostar Corp. et al, contempt of court's permanent injunction
2009-1364 Hearing Components, Inc. v. Shure Inc., definiteness and scope of means-plus-
function features
2009-1357 Delaware Valley Floral Group, Inc. et al v. Shaw Rose Nets, LLC and Shaw, no
admission to change testimony of date in depostion, if request made after the 30 days of
revieing the deposition statement
2009-1281 Enzo Biochem, Inc. et al v. Applera Corp. and Tropix, Inc., indefiniteness under §
112 (2) and the meaning of the word "substantially" in claims
2009-1270 In re Chapman and King, interpretation of the harmful error rule of
Administrative Procedure Act in the inventive step context
2009-1262 SIRF Technology, Inc et al v. ITC and Broadcom Corp and Global Locate, Inc.,
assignment under Federal patent law v. state law, patentable subject matter and joint
infringement
2009-1258 (revised) Vanderbilt University v. Icos Corp, proof of collaboration needed for
joint inventorship
2009-1247, -1249 Comaper Corp. v. Atnec, Inc., et al, remand for new trial on invalidity
when district court jury found independent claims not obvious and dependent claims obvious
2009-1241 Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Company, sua
ponte summary judgement and interference
2009-1120 Wyeth and Elan Pharma International, Ltd v. Sec. of Commerce for Intellectual
Property and USPTO, determination of patent term extension under § 154(b)
2009-1099, -1108... SEB S.A. and T-Fal Corp. v. Montgomery Ward & Co. Inc, et al, induced
infringement and distinction between deliberate indifference and should-have-known
2009-1085 Innovative Therapies, Inc. v. Kinetic Concepts, Inc. et al., mere existence o an
adversely held patent is not sufficient to establish adverse legal interest and thus a
declaratory judgement
2009-1081 Ajinomoto Co, inc., and Ajinomoto Heartland LLC v. ITC et al, invalidity for

5. failure to comply with the best mode requirement
2009-1032 Boehringer Ingelheim International GmbH and Boehringer Ingelheim Pharma.,
Inc v. Barr Labs. Inc et al, terminal disclaimer not valid when underlying patent expired and
safe-harbor of 35 U.S.C 121 against obviousness-type double patenting accusations for
divisional of a divisional
2009-1031 Marrin and ETCH-IT, Inc. v. Griffin, product claim with preamble stating "for
permitting a user to write thereon..."non-limiting
2009-1022 Media Technologies Licensing, LLC, v. The Upper Deck Company, LLC et al.,
obviousness for memorabilia card with famous person
2009-1008, -1009...Therasense, Inc and Abbott Labs. v. Becton, Dickinson and Company
and Nova Biomedical Corp, harmless anticipation error by jury when overwhelming evidence
of obviousness
2008-5181 Honeywell International, Inc and Honeywell Intellectual Properties, Inc. v. US et
al, damages and compensation under the Invention Secrecy Act and the first sale doctrine,
errata here
2008-1602 (revised) Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd, structural
support for means-plus-function cannot rely on simply mentioning prior art references in
description
2008-1597 Laboratory Corp. of America Holdings v. Metabolite Labs. Inc., appellate
jurisdiction for patents and know-how license issues not involving substantial issues of
patent law
2008-1596 Crocs, Inc v. ITC et al. reversal of non-obviousness, errata here
2008-1578 Yorkey v. Diab et al., written description requirement and sufficiency of support
2008-1577 Yorkey v. Diab et al., written description requirement and evidence of reduction
to practice
2008-1511, -1512... Therasense, Inc and Abbott Labs. v. Becton, Dickinson and Company et
al., obviousness and inequitable conduct
2008-1501, -1507 Power-One, Inc. v. Artesyn Techs., Inc., interpretation of the words
"adapted to" and "near" in claims
2008-1500 Anascape, Ltd v. Nintendo of America, Inc., entitlement to priority date if i meets
§ 112
2008-1392, -1393, -1422 Trading Technologies Int. Inc. v. Espeed, Inc. et al, infringement
case for software for displaying the market for a commodity traded in an electronic
exchange
2008-1365, -1366, 2009-1030 Resqnet.com, Inc. et al v. Lansa, Inc., royalty rates and
award of damages for patent infringement and sufficiency of expert testimony
2008-1288 MBO Labs. Inc. v. Becton, Dickinson & Company, violation of rule against

6. recapture by claiming in a reissue previously surrendered subject matter in a related
application
2008-1248 Ariad Pharma. Inc. et al v. Eli Lilly and Company, written description and
enablement different criteria
2007-1066 Hyatt v. USPTO, nonprecedential order to hear the case en banc
2006-1522 HIF Bio, Inc. and Bizbiotech Co., Ltd v. Yung Shin Parma. Industrial Co. Ltd et al
Interesting 7th circuit decision
08-1351, 06-3901 Wisconsin Alumni Research Foundation v. Xenon Pharmaceuticals, Inc,
royalty when shared ownership of patent
Precedential BPAI decisions 2010
2009-006013 Ex parte Frye, Review de novo but generally not uncontested aspects of
USPTO rejections