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Amendment of Preamble in Response to Office Action Not Limiting: In Symantec Corp. v. Computer Associates (Fed. Cir. 2008), the CAFC concluded that an amendment to the preamble was not a separate claim limitation. The technology in this case dealt with anti-virus software. The preamble, along with the body of the claim, was amended in a response to an Office Action to read as: "In a system for transferring digital data for storage in a computer storage medium, a method of screening the data as it is being transferred…." (emphasis added). The Court found that the addition of "as it is being transferred" did not constitute an additional claim limitation because the language did not recite essential structure or steps, and was not "necessary to give life, meaning, and vitality to the claim." Additionally, the Court noted that the preamble was not amended to distinguish the invention from the prior art.

Use of Memorized Client List Violates Ohio’s Trade Secrets Act: The Supreme Court of Ohio recently decided a case where the main issue was whether the use of memorized trade secret information, as opposed to information in a tangible form, can be a basis of a trade secret violation under Ohio’s Uniform Trade Secrets Act. Al Minor & Assoc., Inc. v. Martin, 117 Ohio St.3d 58 (Ohio 2008). In this case, the defendant was employed by the plaintiff before going into business for himself. When defendant started his business he successfully solicited the business of several of plaintiff’s clients by using client lists he had memorized while employed with plaintiff. The Court determined that the information contained in the client lists did not lose its status as a trade secret merely because the information was memorized. Furthermore, the Court noted that it is the trade secret information itself that is protected, "regardless of the manner, mode, or form in which it is stored – whether on paper, in a computer, in one’s memory, or in any other medium."

District Court Permanently Enjoins Implementation of USPTO Rules:
In Tafas v. Dudas, et al. (ED Virginia 2008), U.S. District Judge James C. Cacheris granted a motion for summary judgment in favor of plaintiffs Triantafyllos Tafas and Smithkline Beecham Corporation. The court permanently enjoined the USPTO from implementing its Final Rules, which would have limited the number of continuation applications an applicant could file and the number of claims that could be filed in a patent application. The court specifically noted that the USPTO does not have substantive rule making authority and that the proposed Final Rules were substantive in nature. The USPTO has indicated that it will appeal this ruling to the Court of Appeals for the Federal Circuit.

CAFC Invalidates Claim Finding No Experimental Use: In Atlanta Attachment Co. v. Leggett & Platt, Inc. (CAFC 2008), the CAFC reversed the district court, finding that claim 32 of Atlanta Attachment’s U.S. Patent No. 6,834,603 was invalid based on the on-sale bar of 35 USC 102(b). The claim was directed to a system for attaching a gusset to a panel of a pillowtop mattress. Atlanta Attachment was working with Sealy to develop the device and had sent several prototypes to Sealy for testing. The third prototype included all of the elements recited in claim 32, and Atlanta Attachment invoiced Sealy and was paid for this prototype. Atlanta Attachment had also offered to sell 50 production units to Sealy before the critical date established by 102(b). The CAFC found that Atlanta Attachment’s offer to sell the production units before the critical date implicated the on-sale bar of 102(b). In its defense, Atlanta Attachment argued that the experimental use exception to 102(b) applied in this case. However, the CAFC rejected this notion and found that the experimental use exception does not apply after an offer for sale has occurred. Additionally, the CAFC found that Atlanta Attachment did not retain control over the prototypes tested by Sealy and that the experimental use exception does not apply when experimental testing is used "to determine whether the invention would suit a particular customer’s purpose…."