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Judicial Advocacy 2008

Hualapai Tribe v. Grand Canyon West Ranch LLC, Federal Circuit,, filed December 12, 2008

AIPLA on December 17, 2008, entered another appeal at the Federal Circuit from a Trademark Trial and Appeal Board to object to findings of fraud that ignore the element of deceptive intent, The AIPLA amicus brief in support of appellant tracks the association’s September 11, 2008 brief filed in the pending Bose Corp. v. Hexawave, Inc., challenging the line of TTAB decisions starting with Medinol v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), which have found fraud and cancelled trademark registrations virtually no inquiry into deceptive intent.

Bose Corp. v. Hexawave, Inc., Federal Circuit,, filed October 11, 2008

AIPLA, in an October 11, 2008 amicus brief argued to the Federal Circuit that the Trademark Trial and Appeal Board has been improperly finding fraud and cancelling trademark registrations without sufficient evidence of deceptive intent. The brief argued that the Board disregarded the time-honored elements of fraud, made virtually no inquiry into deceptive intent, and failed to give any meaningful consideration to the elements of materiality and injury. The critical element of deceptive intent was replaced with a finding on the applicant’s knowledge, determined using the “knew or should have known standard.” The issue of materiality was disposed of in a single sentence stating that the affidavit of use would not have been accepted if the alleged defects were known. The brief notes that Federal Circuit patent decisions on inequitable conduct are instructive for the need to recognize appropriate limits on inferences of intent.

SmithKline Beecham Corp. v. Dudas, Federal Circuit, filed October 3, 2008

AIPLA, in an October 3, 2008 amicus brief supporting the appellee, urged the Federal Circuit to affirm the Final Judgment in TaJas v. Dudas, 541 F.Supp. 2d 805, 811 (E.D. Va. 2008), because the district court employed the correct analytical framework in assessing the true nature of the New Rules. The district court held that: (1) the rulemaking authority of the United States Patent & Trademark Office does not extend to substantive rules; (2) Final Rules limiting patent claiming and continuation application practices are substantive rules, and; (3) they thus are void.

Nuijten v. Dudas, Supreme Court, filed June 13, 2008

AIPLA, in a June 13, 2008 amicus brief supporting a petition for certiorari, urged the Supreme Court to review a Federal Circuit decision that a patent claim to a signal per se is not patentable subject matter under 35 U.S.C. §101. The brief maintains that the appellate court improperly restricted access to the patent system by adding new requirements to Section 101 that patent-eligible manufactures be non-transitory, tangible articles that are perceived without special equipment. The decision lacks support in the Constitution, the Patent Statute, and Supreme Court precedent, and would deny access to the patent system for signals and other important advances in technology that do not meet the new requirements, no matter how innovative, unique, or useful they may be. This restricive reading of the otherwise expansive statutory subject matter categories, according to the brief, threatens the delicate balance of innovation, investment, commercialization, and movement of technology into the public domain that is produced by open access to the patent system.

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.