Primer on hot IP issues

July 2, 2004 on 8:52 am | In Current Affairs |

I received an email this morning from Hal Wegner entitled “18 Hot Issues in IP…A Checklist”. I thought the list was a great summary of current IP topics, so I’ll share:

(1) Internet Infringement - Extraterritoriality: Is the sale in the United States of a “golden master” disk containing software to be assembled offshore to there create a patented combination an act of patent infringement? Eolas Technologies, Inc. v. Microsoft Corp., 274 F.Supp.2d 972 (N.D. Ill. 2003). Status: Appeal to the Federal Circuit expected [status not checked].

(2) Internet Infringement -Extraterritoriality: Is a claim to an internet-based combination (system) infringed if one of the elements of that combination is offshore (in Canada)? NTP, Inc. v. Research in Motion, Ltd., Federal Circuit App. No. O3-1615 (Blackberry Patent Litigation). Status: Oral argument June 7, 2004; decision expected late Summer 2004.

(3) Willfulness Damages - Knorr-Bremse: The en banc Federal Circuit reconsidered several issues on willful infringement damages at the argument on February 6, 2004. Status: Awaiting opinion.

(4) Antitrust Violation for “Reverse Payment” ANDA Litigation Settlement: Andrx Pharmaceuticals, Inc. v. Kroger Co., Supreme Court Docket No. 03-779, proceedings below sub nom In re Cardizem CD Antitrust Litig., 332 F.3d 896 (6th Cir. 2003). Status: Awaiting invited amicus curiae brief of the United States on whether certiorari should be granted. UPDATE: see this later post.

(5) Experimental Use Exemption from Patent Infringement (Madey-related issues con’d): Merck KGaG v. Integra Lifesciences I, Ltd., Supreme Court Docket No. 03-1237, proceedings below sub nom Integra Lifesciences I, Ltd. v. Merck KGaG, 331 F.3d 860 (Fed. Cir. 2003)(Rader, J.). Status: Respondent has been invited to file a response to the petition for certiorari; a vote on the certiorari petition has yet to be scheduled. Note: Suprisingly, appellant did not argue that the experimental use exemption should protect the accused infringer from liability for work in the creation of a new product, but instead relied solely upon whether the safe harbor of 35 USC § 271(e)(1) should provide such an exemption.

(6) Experimental Clinical Testing as a Bar-Creating Event: SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306 (Fed. Cir. 2004). Clinical trials for regulatory approval at the FDA more than one year before filing a U.S. patent application were held to constitute a statutory bar under 35 USC § 102(b), even though (it is argued) the safety and efficacy for approval purposes had not been established. Status: Petition for en banc reconsideration is pending.

(7) Festo Prosecution History Estoppel - Dependent Claims Rewritten as Independent Claims: In Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., __ F.3d __ (Fed. Cir. June 2, 2004)(en banc)(Dyk, J.), a near unanimous twelve member en banc panel has held that “rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel.” Judge Newman, alone, dissented. Status: The case was remanded to the trial court to determine whether the presumption of an estoppel is overcome for this case.

(8) Patent Oppositions, “Open Review”: There is currently much smoke about reform from the NAS, FTC, AIPLA, ABA and almost everyone else, including a Congressional hearing in the House of Representatives last month. Status: There is only smoke at present; there is nothing approaching a consensus on the manner of implementation of any new system of this type.

(9) PTO “Scanners Scandal”, Delays in Reexamination - 10.3 Year Average Pendency for Certain Categories: PTO reexaminations are now routinely being delayed for years through the failure of the Commissioner for Patents to internally enforce the “special dispatch” requirement of 35 USC § 305 and the more widespread problem of “scanners” - the routine rerouting of papers away from Examiners to be scanned for an electronic copy. For cases identified by the existence of a Federal Circuit appeal, the average pendency for patent reexamination proceedings from first reexamination or related reissue filing until grant of the reexamination certificate is 10.3 years. Status: The Commissioner for Patents and his Deputy Commissioner for Patent Policy have done nothing to alleviate the problems.

(10) Foreign Public Use and Sale as a Statutory Bar under 35 USC § 102(b): While the explicit language of the statute bars foreign activity as a statutory bar, if there is a non-enabled publication that exists in parallel with the foreign public use or sale, may this create a statutory bar? The issue is inferred from In re Zary and In re Elsner where non-enabling foreign plant certificates were relied upon as statutory bars based upon the parallel existence of a foreign public use or sale of the plant. Reversal requires that the court at least distinguish if not overrule In re LeGrice, 301 F.2d 929, 936 (CCPA 1962). Status: Awaiting decisions in both cases which were argued April 9, 2004.

(11) Does the PTO have the authority to require information about foreign sales or uses? In Star Fruits S.N.C. v. United States, opinion below, 280 F.Supp.2d 512 (E.D.Va. 2003), the applicant refused to answer whether there was a foreign use or sale, responsive to Zary-like questions. The PTO held the case abandoned for refusal to answer the question, which was followed by the trial court. Status: An appeal is pending at the Federal Circuit that will not be argued before the August 2004 term.

(12) Enzo “Written Description” (35 USC § 112, ¶ 1) as a “Possession” Requirement: Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, (Fed. Cir. 2004)(Lourie, J.), following Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 963 (Fed. Cir. 2002)(Lourie, J.) - in conflict with the statute and precedent - seeks to create a judge-made “possession” requirement. Status: A long overdue decision on whether the court will grant en banc rehearing to Rochester is awaited. (The panel opinion was issued February 13, 2004, nearly five full months ago.) UPDATE: On July 2, 2004 the case was decided with the denial of en banc reconsideration. UPDATE: see this later post.

(13) Amendment to 35 USC § 103(c) to Exclude “Joint Research Agreement” Prior Art for Obviousness: For appropriately drafted written agreements, patent-defeating effects of 35 USC §§ 102(e), 102(f) and 102(g) for obviousness are voided, even retroactively in some situations; even written agreements amongst some competitors may qualify for exemption. Status: Enactment expected during the current Congress.

(14) Japan Employee Inventor Law: An Amendment to Art. 35 of the Japanese patent law purportedly mitigates the high awards to employed inventors, but is not retroactive for inventions already made and does not change the ten year statute of limitations for litigation that commences from commercialization. The new law does make it imperative that future inventions made in Japan are dealt with under the new law. Status: Already fully enacted, effective April 1, 2005.

(15) Patent-Eligibility of “Living” Invention Claims in Canada Restored: The Supreme Court of Canada in its May 21, 2004, 5-4 ruling in Schmeiser v. Monsanto Canada Inc., 2004 SCC 34 (2004), has confirmed the patent-eligibility of “living” inventions when expressed as other than a higher form (here, plant genes and cells), distinguishing its notorious contrary ruling in the Harvard Mouse case, Harvard College v. Canada (Commissioner of Patents), [2002] 4 S.C.R. 45, 2002 SCC 76.

(16) British Interpretation of Equivalents: The House of Lords is currently reviewing Kirin-Amgen Inc v. Transkaryotic Therapies Inc., [2003] R.P.C. 3 (Court of Appeal 2002), which may represent the first opinion from the highest court of the United Kingdom to interpret the Munich Patent Convention of 1973 on the scope of patent protection. (The leading lower court opinion making such an interpretation is the Improver case which was penned by a current member of the House of Lords.). Status: A decision is expected later this year.

(17) Trademark Likelihood of Confusion: “Does the classic fair use defense to trademark infringement require the party asserting the defense to demonstrate an absence of likelihood of confusion, as is the rule in the 9th Circuit, or is fair use an absolute defense, irrespective of whether or not confusion may result, as is the rule in other Circuits?” KP Permanent Make-Up, Inc. v. Lasting Impression Inc., Supreme Court Docket No. 03-409 Status: Respondent’s brief due July 19, 2004; oral argument Fall 2004 term; Solicitor General to participate in oral argument and briefing.

(18) Constitutionality of Ban on Direct Out-of-State Wine Shipments: “Does a State’s regulatory scheme that permits in-state wineries directly to ship alcohol to consumers but restricts the ability of out-of-state wineries to do so violate the *** Commerce Clause in light of Sec. 2 of the 21st Amendment?” Granholm v. Heald, Supreme Court Docket No. 03-1116 (Michigan), Michigan Beer & Wine Wholesalers Association v. Heald, Supreme Court Docket No. 03-1120 (Michigan), and Swedenberg v. Kelly, Supreme Court Docket No. 03-1274 (New York)). Status: Certiorari granted May 24, 2004; briefing now underway; argument Fall 2004 term.

 Print This Post |  Email This Post | | Subscribe via e-mail

Related Posts:

• Hot, hot, hot…
• IP Memes: Ten Most Wanted — and Other Hot IP Issues
• IP Memes: Ten Most Wanted — and Other Hot IP Issues