Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In a fairly unremarkable, but interesting nuance of claim construction worth noting, the Southern District of New York held that a claim using “comprising” for all of its limitations, but in which one of the clauses of the claim utilized “consisting of,” the elements in the clause containing the “consisting of” language were limited to what was recited, rather than being open-ended as with “comprising.” The Court quoted a Federal Circuit case that stated regarding the clause using “consisting of,” that “it does not limit the entire claim as such, but it does limit the clause for which it acts as a transition to only those elements found in that particular clause.” The opinion is here.
2. The Supreme Court has granted certiorari in Romag Fasteners, Inc. v. Fossil, Inc. et al. to resolve the question of whether willful infringement is required in order for a plaintiff to be awarded an infringer’s profits as damages under the Lanham Act. We have previously written about this issue and this case here . The case will be on the Supreme Court’s docket commencing in October 2019.
3. For the latest in ongoing discussions of patent reform in the Senate, Senators Coons (D-Del) and Tillis (R-NC) released a statement.