American Intellectual Property
Law Association
Positions in Amicus Curiae Briefs

Procedure for Requesting AIPLA Amicus Participation in a Pending Case (html) or PDF Version

In re Bilski, en banc Federal Circuit, filed April 7, 2008

AIPLA on April 7, 2008, filed an amicus brief with the en banc Federal Circuit, arguing that it is improper to apply the subject matter categories at 35 U.S.C. §101 narrowly to require that a process claim must be implemented by an apparatus in order to be patent-eligible under Section 101. According to the brief, Section 101 broadly encompasses anything under the sun made by man, and is limited only by the judicially-developed exclusions for laws of nature, physical phenomena, and abstract ideas. The brief maintains that this formulation provides a flexible rubric that promotes disclosure and adapts to yet unforeseen technologies, while retaining the safeguard against overbreadth in the traditional patentability requirements of novelty, non-obviousness, and sufficient disclosure to the public.

In re Volkswagen AG, en banc Fifth Circuit, filed March 26, 2008

AIPLA on March 26, 2008, filed an amicus brief in an en banc Fifth Circuit case, arguing that district courts in that circuit (particularly in the Eastern District of Texas) have been misapplying statutory transfer standards under 28 U.S.C. §1404. In this product liability arising out of a car accident in the Northern District of Texas but filed in the Eastern District of Texas, the defendant is seeking a writ of mandamus to overturn the denial of its transfer motion. The AIPLA brief focuses on the unjustifiable denials of legitimate transfer motions in patent cases brought in the Eastern District of Texas by parties who view it as a plaintiff-friendly venue but who have virtually no connection to the district.

Egyptian Goddess, Inc. v. Swisa, Inc., en banc Fed. Cir., filed February 5, 2008

AIPLA in a February 5, 2008, amicus brief urged the en banc Federal Circuit to eliminate the "point of novelty" infringement test for design patent infringement cases. The brief argued that the proper test for infringement is the “ordinary observer” test to determine if the accused design is substantially similar to the claimed design. The Federal Circuit’s addition of a point of novelty test to the ordinary observer test, according to the brief, is both unworkable and undermines the presumption of validity created by the issuance of the patent.

SmithKline Beecham Corp. v. Dudas, E.D. Va., filed 12/27/07

AIPLA in a December 27, 20007, amicus brief told the District Court for the Eastern District of Virginia that the retroactive application of PTO final rules changing continuation and claims practice punish applicants who complied with and made decisions based on established law. The brief was filed in support of the plaintiffs' request for a summary judgment that the rules as issued are improperly retroactive because they impair existing trade secret rights and impose new duties on completed transactions.

Quanta Computer, Inc. v. LG Electronics, Inc., U.S. Sup. Ct., filed December 6, 2007 (45 pages)

AIPLA in a December 6, 2007, amicus brief urged the Supreme Court to apply the patent exhaustion doctrine in a way that does not preclude an infringement action against a purchaser where the sale made clear that downstream licenses are not being granted but rather must be separately negotiated. Thus, when an accused infringer has clear notice before entering into any purchase of potential liability as an infringer, his actions should not be exculpated. The effect of any such restrictions or conditions imposed by the patent owner or its licensees is not violative of the antitrust laws. Where these notice provisions are met, it should not matter whether the patent owner chose to maximize return by charging the parties at each level of supply an individualized royalty or by requiring a complete royalty payment from the first licensee (thereby exhausting patent rights). Whether the first transaction is a sale or license or covenant not to sue, it should not change these conditions or render a sale unauthorized.

SmithKline Beecham Corp. v. Dudas, E.D. Va., filed 10/25/07

AIPLA in an October 25, 20007, amicus brief urged the District Court for the Eastern District of Virginia to grant plaintiff’s pending motion for a temporary retraining order and preliminary injunction to prevent the implementation of recent USPTO rules while the case proceeds on its merits, arguing the retroactive nature of the rules once implemented will cause irreparable harm to patent applicants throughout the country and over a wide spectrum of technologies.  The brief addresses the irreparable harm caused by the retroactive impact of applying the new rules to pending patent applications, arguing those applications were filed, and substantial resources committed, in reliance on fundamental principles of patent law that have applied for more than a century.  The brief argues that a delay in implementing the new rules pending resolution on the merits, by contrast, should not adversely impact PTO operations or policy.

Egyptian Goddess, Inc. v. Swisa, Inc., Fed. Cir., filed October 9, 2007

AIPLA in an October 9, 2007, amicus brief urged the Federal Circuit to reconsider its ruling that the point of novelty that a design patent owner must identify in an infringement suit must be more than trivially different from design features in the prior art. According to the brief, this new rule defeats the statutory presumption of validity by requiring the patentee to prove non-obviousness after already satisfying the PTO on that issue. Supporting the patentee's request for a rehearing and rehearing en banc, the brief points out that the "points of novelty" test for proving infringement requires only a showing of "novelty."

TOP

ITC Ltd. v. Punchgini, Inc., NY Ct. App, filed October 2, 2007

AIPLA in an October 2, 20007, amicus brief urged the New York Court of Appeals to recognize that New York common law recognizes the “well-known marks” doctrine, enabling the owner of a foreign mark that is well known, but not used in New York, to prevent unauthorized uses of its mark in a manner likely to confuse or deceive consumers. The case is in the New York high court upon the certification of questions from the Second Circuit, which concluded that the well-known marks doctrine is not encompassed by the Lanham Act.

TOP

ITC Ltd. v. Punchgini, Inc., U.S. Sup. Ct., filed July 25, 2007 (28 pages)

AIPLA in a July 25, 20007, amicus brief urged Supreme Court review of a Second Circuit's decision that federal law does not recognize the "well-known marks" doctrine as an exception to the general territoriality rule that priority of trademark rights depends solely upon use in U.S. commerce. Under the well-known marks doctrine, according to the brief, a foreign mark's reputation in the United States supports its enforcement in U.S. courts even though that mark is not in use in the United States. Without taking a position on which party should prevail on the merits, the brief argued that the Second Circuit's decision on the well-known marks doctrine directly conflicts with the decision of the Ninth Circuit in Grupo Gigante S.A. De CV v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004), and should be reversed.

TOP

In re Bilski, Fed. Cir., filed April 30, 2007 (32 pages)

AIPLA in an April 30, 2007, amicus brief argued to a Federal Circuit panel that the proper test for determining what constitutes statutory subject matter under 35 U.S.C. § 101 is set forth in Diamond v. Diehr, 450 U.S. 175 (1981). Specifically, the determination of whether a process claim incorporating an abstract idea is statutory subject matter depends on whether the claimed process, when viewed as a whole, recites a practical application with a useful result. While a transformation of physical subject matter from one state to another may be relevant in that determination, there should be no statutory subject matter requirement that claims incorporating abstract ideas include a strictly physical transformation.

TOP

In re Seagate, filed March 19 2007 (40 pages)

AIPLA in a March 19, 2007, amicus brief argued to the en banc Federal Circuit that the standards for finding willful infringement should be reserved for infringers guilty of truly “reprehensible” conduct. The willfulness determination, according to the brief, should focus on subjective bad faith of accused infringers and apply the same criteria used for imposing punitive sanctions in other areas of tort law. On the subject of waiver, the brief explains that forcing disclosure of communications with trial counsel, not to mention trial counsel’s mental impressions and trial strategies, would effectively deny accused infringers effective assistance of counsel at trial. Facing such a harsh result, trial counsel would have no choice but to exclude clients from important strategic considerations.

TOP

Microsoft Corp. v. AT&T, Corp., filed December 15, 2006 (26 pages)

AIPLA on December 15, 2006, filed an amicus brief in the Supreme Court, arguing that the Federal Circuit misinterpreted section 271(f) of the Patent Act as covering software copies made abroad from a master disk supplied from the United States. While the appellate court correctly concluded that software can be a "component" of a patented invention within the meaning of section 271(f), it incorrectly held that copying was "subsumed" in the act of supplying software, and that Section 271(f) liability for foreign-made copies is triggered by sending a single copy abroad with the intent that it be replicated.

TOP

KSR Int'l v. Teleflex Inc., filed October 12, 2006 (30 pages)

AIPLA filed an amicus brief in the Supreme Court urging that proof of obviousness for a combination patent continue to require evidence that there was a reason—a teaching, suggestion, or motivation—for combining prior art in the manner claimed. The brief argues that the current, well-defined analytical framework draws upon principles found in Supreme Court case law and is of vital import to the patent system.

TOP

Medimmune, Inc. v. Genentech, Inc., et al., filed July 26, 2006. (20 pages – 242KB)

The Court should affirm the Federal Circuit decision that a lack of sufficient immediacy and genuine adversity precluded Declaratory Judgment Act jurisdiction in this case, but should not adopt a bright-line rule that such jurisdiction for a licensee's challenge to patent validity requires the licensee to breach the patent license. A concrete and immediate dispute under the Constitution may also exist where the licensor and licensee engage in a legitimate debate over the validity or scope of the licensed patent rights, due to, for example, an unforeseen change in circumstances, and the licensor makes clear that it will promptly sue if the licensee fails to make timely payments according to its interpretation of the license.

TOP

Lawman Armor Corporation v. Winner International, LLC and Winner Holding LLC, filed April 14, 2006. (17 pages – 269KB)

In its earlier decision, the CAFC stated that a novel combination of old elements is insufficient to constitute a design patent’s point of novelty. This could be interpreted to be a shift in well-settled design patent jurisprudence and at odds with previous CAFC decisions. AIPLA argues in this brief that the Court should clarify that the novel visual appearance of a combination of old elements can constitute a design patent’s point of novelty.

TOP

Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., filed February 6, 2006. (28 pages – 393KB)

In an amicus brief, AIPLA argued that the Supreme Court should decline to consider issues of patentable subject matter suggested in the question for review but not raised or considered below. If the Court decides to consider this issue, it should leave unchanged the broad scope of patentable subject matter described in Diamond v. Diehr.

TOP

eBay Inc. v. MercExchange, L.L.C., filed January 17, 2006 (34 pages – 98KB)

In a joint amicus brief to the Supreme Court, AIPLA and the Federal Circuit Bar Association argue that Federal Circuit’s “general rule” that a permanent injunction will normally issue in a patent case once validity and liability have been established is fully consistent with 35 U.S.C. §283 and is well-grounded in the traditional factors governing the issuance of injunctions. The brief further argues in favor of adhering to the Supreme Court’s 1908 ruling in Continental Paper Bag that permanent injunctions are available to patentees who do not make the product or use the process covered by the patent.

TOP

Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., filed November 11, 2005 (18 pages – 1.2MB)

In a joint amicus brief to the Federal Circuit, AIPLA and the Federal Circuit Bar Association urge en banc reconsideration of Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., which applied 35 U.S.C. §271(f) to a process patent.

TOP

Illinois Tool Works, Inc and Trident, Inc v. Independent Ink, Inc., filed August 4, 2005 (25 pages – 1MB*)

AIPLA on August 4, 2005, filed an amicus brief on the merits in Illinois Tool Works, Inc. v. Independent Ink, Inc. (No. 04-1329), in support of neither party, arguing that the mere existence of a patent should not create any presumption of market power in a relevant market to prove an antitrust violation under Section 1 of the Sherman Act.

TOP

Jan K. Voda v. Cordis Corp., filed June 15, 2005 (29 pages – 155K*)

The CAFC is considering whether jurisdiction exists over foreign patent law claims based on federal supplemental jurisdiction statute, 28 U.S.C. §1367(a). AIPLA argues that in this circumstance federal courts lack supplemental jurisdiction over the assertion of the patentee of claims involving a foreign patent claims.

TOP

Illinois Tool Works, Inc and Trident, Inc v. Independent Ink, Inc., filed May 4, 2005 (27 pages – 60K*)

AIPLA filed this amicus brief in support of the Petitioners' request to the Supreme Court to grant certiorari to review the decision of the Court of Appeals for the Federal Circuit in this case. In finding a Sherman Act Section 1 Antitrust violation based on the tying of a patented product to an unpatented product, the CAFC panel held that the mere existence of a patent on a product creates a rebuttable presumption that the patent owner has market power in the relevant market for the patented product itself. AIPLA argues in this brief that the mere existence of a patent should not create any presumption of market power in a relevant market.

TOP

Integra Lifesciences I, Ltd. v. Merck KGaA, filed February 22, 2005 (31 pages – 234K*)

The Federal Circuit in Integra Lifesciences I, Ltd. v. Merck KGaA gave an improperly narrow interpretation to Section 271(e)(1) of Title 35, the infringement exemption for uses of patented inventions that are reasonably related to information submissions to the Food and Drug Administration. The ruling appears to limit the safe harbor protection to clinical studies using human subjects while excluding many other types of studies typically included in applications for FDA approval, including preclinical in vitro and animal studies, comparative studies, and safety profiling studies, excluding studies that are embraced by the plain language of the statute.

TOP

Metro-Goldwyn-Mayer Studios INC v. Grokster, LTD, filed January 2005 (29 pages – 193K*)

AIPLA argues that the Supreme Court recognize that “contributory infringement" in copyright law includes “active inducement,” and that a showing of “substantial noninfringing uses” is not a defense to “active inducement.” AIPLA requests that the Court remand the case for a determination as to whether “active inducement” can be established under the facts of this case.

TOP

Metro-Goldwyn-Mayer Studios INC v. Grokster, LTD, filed November 8, 2004 (14 pages – 157K*)

In an amicus brief filed November 8, 2004, AIPLA urged the Supreme Court to review the Ninth Circuit decision that a defendant may avoid liability for contributory copyright infringement with evidence that its product is “merely capable” of non-infringing uses. Filed in support of neither party, the brief argued that this decision creates a split in the circuits in light of the Seventh Circuit view that courts considering contributory copyright infringement must consider if the product “is widely used for legitimate, unobjectionable purposes.” This split plagues important sectors of the economy with confusion and uncertainty; copyright holders need practical protection from rampant infringement of their works, and software and equipment suppliers need predictable boundaries for the marketing of lawful products, according to the brief.

TOP

In Re Wilhelm Elsner; In Re Keith W. Zary, filed October 12, 2004 (17 pages – 31K*)

AIPLA on October 12, 2004 filed an amicus brief urging the Federal Circuit to reconsider en banc the panel ruling that foreign sales of a plant covered by a U.S. patent can serve as evidence that a foreign publication is enabling and therefore anticipates the U.S. plant patent. According to the brief, this case presents the Court with the opportunity to answer the important question of whether information that does not itself constitute Section 102 prior art may nevertheless be considered in determining whether other information constitutes a statutory bar.

TOP

Edward H. Phillips, Plaintiff-Appellant, v. AWH. Corporation, Hopeman Brothers, Inc., and Lofton Corporation, Defendants-Cross Appellants, filed September 20, 2004 (32 pages – 997K*)

AIPLA on September 20, 2004, filed an amicus brief in an en banc Federal Circuit case concerning the claim interpretation process. Although the court posed several questions for briefing, AIPLA urges the court to first address the fundamental standard that should govern claim construction: that a claim term must be construed from the perspective of a person of ordinary skill in the relevant art at the time the patent issues seeking to understand the term's meaning from a study of the entire intrinsic record.

TOP

Miguel Figueroa, et al., Plaintiffs v. The United States, Defendant, brief filed September 13, 2004 (Motion and Brief - 19 pages, 667KB*; Exhibits - 66 pages, 3.6MB*)

While taking no position on the request for relief, AIPLA points out to the United States Court of Federal Claims that the diversion of funds from the USPTO leads to increased examiner burdens and decreased patent quality, thereby adversely impacting the ability of the Office to carry out the Constitutional command of promoting the progress of the useful arts.“ The brief was filed on September 13, 2004.

TOP

KP Permanent Make-Up, Inc., Petitioner v. Lasting Impressions I, Inc.; MCN International, Inc., Respondents, filed April 20, 2004 (26 pages – 915K*)

The Ninth Circuit precludes a "fair use" defense under section 33(b)(4) of the Lanham Act in cases where there is a likelihood of confusion. The Circuit's reading of the fair use defense is not supported by the statutory text. Further, such a reading renders the "fair use" defense in section 33(b)(4) of the Lanham Act nugatory. A narrow reading, however, avoids serious first Amendment issues presented by an ineffective fair use defense. On the other hand, the Court should avoid establishing any countervailing absolute rule against considering likelihood of confusion in order to protect the balance embodied in the Lanham Act.

TOP

Andrx Pharmaceuticals, Inc., Petitioner, v. The Kroger Co., Albertson’s, Inc., Hy-Vee, Inc., The Stop & Shop Supermarket Co., Walgreen Co., Eckerd Corp., CVS Meridian, Inc., and Rite Aid Corp., et al., Respondents,filed December 29, 2003. (PDF*)

The Sixth Circuit’s decision in In re Cardizem CD Antitrust Litigation, 332 F.3d 896 (6th Cir. 2003) (hereafter “Cardizem”) imposed per se antitrust illegality for an agreement to settle patent litigation in which the patent owner gave consideration to the alleged infringer in exchange for an agreement not to practice the patent before patent expiration. Although the specific facts of the case relate to pharmaceutical companies settling litigation under the Hatch-Waxman Act, the detrimental effect of the Sixth Circuit’s per se rule extends to all patent settlements and license agreements in all industries. The Sixth Circuit focused on monetary payments. But the implications are that any type of consideration flowing from a patentee to a potential infringer as part of the overall agreement would render the agreement per se illegal.

TOP

Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., filed November 3, 2003.

The duty to obtain legal advice before engaging in activity that may result in infringement should be abolished. Abolishing this duty will eliminate the adverse inferences that are now drawn from failing to obtain legal advice or from asserting the attorney-client privilege to protect such advice. In many cases, raising substantial defenses at trial should defeat willful infringement liability, but not always. Some conduct may be sufficiently culpable that the court should balance the misconduct against the defenses raised in deciding whether to enhance damages. In striking this balance, the timing and circumstance under which the defendant learned of the defense may be a relevant factor.

TOP

Dastar Corporation v. Twentieth Century Fox Film Corporation, filed February 14, 2003 (72K*)

A reverse passing off claim under section 43(a) of the Lanham Act requires that the plaintiff prove 1) that the defendant has falsely designated the origin of a work, or made any other false or misleading description or representation of fact, and 2) that consumers will likely be confused or deceived as to the origin, sponsorship, or approval of the work. Section 35 of the Lanham Act requires that enhanced awards of the defendant's profits be compensatory and not punitive; thus, a court applying section 35(a) may not award twice the defendant's profits for purely deterrent purposes.

TOP

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., et al., filed November 19, 2002 (637K*)

Prosecution history estoppel, including the rebuttal of the presumption of surrender, is a question of law for the trial judge, but may be supported by issues of fact. Such factual determinations should be decided by the jury in a jury trial, and should be reviewed by this court under the substantial evidence standard when decided by a jury or the clearly erroneous standard when decided by the judge. This court should allow the law regarding the criteria for rebutting the presumption of surrender to evolve on a case-by-case basis, and should avoid prematurely adopting a bright-line test.

TOP

Moseley v. Victoria's Secret Stores, Inc., filed August 14, 2002 (85K*)

The phrase "causes dilution of the distinctive quality of the mark," in the Federal Trademark Dilution Act does not require a showing of actual harm for the granting of injunctive relief; rather, relief should be granted where there is a showing of a "likelihood of dilution."

TOP

Eric Eldred, et al., v. John D. Ashcroft, filed August 5, 2002 (605K*)

The reversal of Congressional power to extend existing copyright terms would destabilize other areas of the law, Congress has the authority under the copyright clause to extend existing copyrights, and the decision below correctly held that the Copyright Term Extension Act does not violate the First Amendment.

TOP

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., et al., filed August 2001 (130K*)

The rigid "complete bar" rule adopted by the Federal Circuit, which is inconsistent with the Supreme Court's proscription against a rigid rule that invokes a prosecution history estoppel regardless of the reason for a claim amendment, should be rejected in favor of a standard that would impose an estoppel on the basis of an objective determination of whether the patent applicant evinced a clear and unmistakable surrender of otherwise patentable subject matter.

TOP

J.E.M. Ag Supply Inc., et al. v. Pioneer Hi-Bred International, Inc., filed June 11, 2001 (66K*)

Sexually reproducing plants are within the scope of 35 U.S.C. §101 and accordingly are permissible subject matter for a utility patent.

TOP

Johnson & Johnston Associates, Inc. v. R.E. Service Co., Inc. and Mark Frater, filed May 7, 2001 (113K*)

"The doctrine of equivalents may be relied upon with respect to disclosed, unclaimed subject matter so long as the application and prosecution history would not lead a reasonable competitor to conclude that the unclaimed subject matter had been abandoned."

TOP

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a/k/a SMC Corporation, and SMC Pneumatics, Inc., filed May 9, 2001 (100K*)

Brief of amicus curiae AIPLA in support of petition for certiorari notes that "complete bar" rule of Festo contravenes Supreme Court's doctrine of equivalents and prosecution history estoppel jurisprudence.

TOP

The New York Times Company, Inc.; Newsday, Inc.; The Time Incorporated Magazine Company; Lexis/Nexis and University Microfilms International v. Jonathan Tasini; Mary Kay Blakely; Barbara Garson; Margot Mifflin; Sonia Jaffe Robbins and David Whitford, filed January 5, 2001 (320K*)

Conversion of a collective work from one medium to another is not a "revision" that is within the rights of a publisher under Section 201 (c) of the Copyright Act if each separate contribution is stripped-out from the collective work, but the mere conversion of a collective work from one medium to another is a privileged "revision".

TOP

TrafFix Devices, Inc. v. Marketing Displays, Inc., filed October 2, 2000 (3.8MB*)

That a product employs an invention claimed in a utility patent does not, in itself, prevent the product's configuration from being protected as trade dress.

Ba TOP

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a/k/a SMC Corporation, and SMC Pneumatics, Inc., filed November 29, 1999

Five questions asked by the CAFC regarding prosecution history estoppel and the doctrine of equivalents are answered in a manner which best serves the "public notice" function of the prosecution history while allowing patent holders an adequate scope of protection for their inventions.

TOP

Wal-Mart Stores, Inc. v. Samara Brothers, Inc., filed November 18, 1999

A standard for determining whether product designs are inherently distinctive should include the four Seabrook factors, and other factors tending to show that particular product design trade dress would be recognized by members of the relevant public as an indication of source, origin, sponsorship, affiliation, or approval.

TOP

Comedy III Productions, Inc. v. Gary Saderup, Inc., filed September 10, 1999

Trading on the recognition and goodwill built up in anothers property (the likeness of the Three Stooges) without any commentary is not "speech" protected by the First Amendment.

TOP

CSU, L.L.C., et al v. Xerox Corporation, filed July 20th, 1999

An intellectual property owner enjoys a rebuttable presumption that a refusal to sell or license the owner's intellectual property rights is legitimate, privileged, and lawful which can be overcome only by a showing that the owner engaged in improper conduct that overcomes the presumption of legality.

TOP

Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank and United States of America, filed March 22, 1999

Congress properly abrogated States' Eleventh Amendment immunity from liability for patent infringement under its Fourteenth Amendment powers. Also, a State may voluntarily waive its sovereign immunity by actively participating in the patent system.

TOP

College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, filed March 20, 1999

Congress enactment of "The Trademark Remedy Clarification Act" was a valid abrogation of States' Eleventh Amendment Immunity as to actions for trademark infringement because trademarks are property protected by the Fourteenth Amendment's prohibition on State deprivation of property.

TOP

Pioneer Hi-Bred International, Inc. v. J.E.M. AG Supply, Inc., filed March 10, 1999

Sexually reproducing plants and seeds are permissible subject matter for utility patents under 35 U.S.C. 101.

TOP

Denise Chavez v. Arte Publico Press, et al., filed November 10, 1998

Congress properly exercised its Fourteenth Amendment authority in abrogating States' Eleventh Amendment immunity for copyright and trademark infringement; additionally, States voluntarily waive such immunity by actively participating in the copyright and trademark systems.

TOP

Pfaff v. Wells Electronics, Inc., filed May 14, 1998

In determining whether an invention is "on sale" under 35 U.S.C. 102(b), the statute requires an actual device embodying the invention.

TOP

Feltner v. Columbia Pictures Television, Inc., filed December 15, 1997

Congress did not intend to grant a right to a jury trial in 17 U.S.C. 504 (c) and the Seventh Amendment does not require a jury trial in a copyright infringement suit where the plaintiff claims statutory damages.

TOP

In Re Zurko, filed November 2, 1997

The "clearly erroneous" standard of review for findings of fact by the PTO Board of Patent Appeals and Interferences is appropriate and in conformity with the Administrative Procedure Act.

TOP

College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, filed September 23, 1997

Congress properly abrogated States' Eleventh Amendment immunity to patent suits under a valid exercise of its Fourteenth Amendment powers.

TOP

Quality King Distributors v. L'Anza Research International, Inc., filed, September 22, 1997

Section 602(a) of the Copyright Act, which prohibits the unauthorized importation of lawfully made copies acquired outside the United States, is not impacted by the first sale doctrine of section 109(a).

TOP

Insultherm v. Tank Insulation International, filed, June 30, 1997

Supreme Court should resolve the existing uncertainty as to whether an antitrust counterclaim is a compulsory claim in a patent infringement action.

TOP

Chavez v. Arte Publico Press, filed, August 2, 1996

A State waives its Eleventh Amendment immunity to copyright and trademark suits by voluntarily participating in the federal intellectual property system.

TOP

Lebas Fashion Imports of USA v. ITT Hartford Ins. Group, filed, July 12, 1996

Insurance policy language "misappropriation of advertising ideas or style of doing business" encompasses trademark infringement and cannot be limited to the common law tort of misappropriation.

TOP

Markman v. Westview Instruments, Inc., filed, December 8, 1995

Patent claim construction is a question of law to be determined by the court.

TOP

Warner-Jenkinson Co. v. Hilton Davis Chemical Co., filed,
December 6, 1995

Doctrine of equivalents should reach only insubstantial differences and is a question of law for the court.

TOP

Lotus Development Corporation v. Borland International, Inc., filed, November 9, 1995

Appellate court erred in concluding that expression in menu command hierarchy used to operate computer program is part of a "method of operation" and thus excluded from copyright protection.

TOP

*Documents available only in pdf format. You may obtain the free Adobe Acrobat Reader to read pdf files by clicking on the following link:

or (http://www.adobe.com/products/acrobat/readstep2.html)

Related Files