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IP Law News
Out of the frying pan and into the fire. That is the reaction of many patent owners to the recent decision of the Court of Appeals for the Federal Circuit in The Forest Group, Inc. v. The Bon Tool Company, 590 F.3d 1295 (Fed Cir. 2009). Patent owners who make or sell articles covered by patents are required to mark those articles with the applicable patent numbers, or they may lose the ability to recover damages for infringement. On the other hand, under the Federal Circuit’s opinion in Forest, a patent owner who marks articles with patent numbers that do not cover the article can be tagged with potentially huge false marking penalties. The Forest opinion has not gone unnoticed. A new class of plaintiffs, the so-called “marking trolls” has launched a torrent of lawsuits, seeking to cash in on the Forest opportunity.
In a recent decision, Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 2008-1403 (Fed Cir. 2009) the Federal Circuit upheld as constituting patent eligible subject matter under 35 U.S.C. § 101 a diagnostic test that also involved treatment of a patient. The decision has important implications for pharmaceutical and biotechnology companies that sell diagnostic devices and methods.
In Cardiac Pacemakers, Inc. v. St. Jude Medical, 576 F.3d 1348 (Fed. Cir. 2009), the Federal Circuit held that liability does not extend to U.S. manufacturers of components made in the U.S. that are shipped abroad and then used in a process that would otherwise infringe a method claim of a U.S. patent. This en banc opinion reversed prior Federal Circuit precedent thereby harmonizing the Federal Circuit’s cases with the Supreme Court’s recent ruling in Microsoft Corp. v. AT&T Corp., 127 S.Ct. 1746 (2007).