Abbott Laboratories v. Novopharm - This case involves claim interpretation and the meaning to be given a coined word: “co-micronization”. The case shows that when defining a newly coined term that is to be used in a patent claim, great care has to be exercised to avoid accidental incorporation of unwanted limitations into the definition.

Amgen Inc. v. Hoechst Marion Roussel - A broadly drafted biotechnology claim is upheld since is was fully supported by the written description. This case is to interest in understanding other recent decision by the Federal Circuit on the written description requirement and seeking to explain what those cases mean. In particular, this case points out that prior cases had never established that there was a requirement that the claim specify all essential elements needed to ensure that the invention works. The Court explains that all that was required that a broadly drafted claim must be fully supported by the description and the drawings. However, the difference between these propositions was not explained.

Boehringer Ingelheim Vetmedica Inc. v. Schering-Plough Corp. - The function, way, result test for a claim element to determine whether there is infringement under the doctrine of equivalents, the issue to be decided was whether the element fulfilled the same function in the context of the claimed invention as opposed to some other context.

Dayco Products, Inc. v. Total Containment, Inc. - This case reviews the standards for making a showing of inequitable conduct and also delves into issues of what must be disclosed to patent office Examiners when there are multiple related applications pending at one time, particularly when one examiner has rejected a claim that is being pursued in a second application handled by a different examiner.

In re Peterson - The primary issue in this case was on the determination of obviousness in cases where there are overlapping ranges specified in the claim in suit and in the prior art, particularly in the context of metallic alloys.

Lacks Industries Inc. v. McKechnie Vehicle Components - Although this case is of most interest because of its treatment of the on sale bar, the case is also a useful reminder of a number of other aspects of the Federal Circuit’s approach to issues of infringement and validity. On the question of the on sale bar the case emphasized the need to consider whether the act which was alleged to trigger the bar was something that contract law regarded as an offer that could give rise to a valid contract.

Madey v. Duke University - Duke apparently argued that as a non-profit educational establishment its activities were inoculated against patent infringement as long as they were solely for research, academic or experimental purposes. The Federal Circuit disagreed and pointed out that in earlier cases it had held that although an experimental use exception as crafted in the nineteenth century continued to exist, it was a very narrow one for example “to satisfy idle curiosity or for strictly philosophical enquiry”. Furthermore, the status of the defendant as a non-profit establishment was found to be irrelevant to the question of whether an experimental use exception might exist.

Micro Chemical Inc. v. Lextron Inc. - Damages for patent infringement: lost profits versus a reasonable royalty - the standards, in particular relating to the requirement that for lost profits to be awarded there must be no “non-infringing alternative” available.

Northrup Grumman Corp. v. Intel Corp. - The meaning of “corresponding structure” in 35 U.S.C. 112 paragraph 6 is finally clarified. When looking to see what is a “corresponding structure” for application of a “means plus function claim” one should look only at those features of an element described in the specification that are required to perform the stated function.

Schering Corp. v. Geneva Pharmaceuticals Inc. - In this case the Federal Circuit again addresses the question of anticipation by virtue of what was inherent in the prior art.