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Quarterly Journal 43-4

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Table of Contents

Obvious Confusion Over Properties Discovered After a Patent Application Members Only
Douglas L. Rogers
The requirement that an invention be non-obvious is an important gatekeeper  for weeding out advances in the useful arts that would have occurred in the ordinary course of events.  However, the Federal Circuit has issued inconsistent rulings in three recent pharmaceutical cases on whether unexpected properties of a compound becoming known after the patent application can support a conclusion of non-obviousness. This article contributes to the obviousness literature by challenging the view that unexpected properties – even if they were not known until after the patent application - show that an invention is non-obvious.  First, the article shows the view that the particular results of a claimed invention must have been predicted is inconsistent with the Supreme Court’s 2007 KSR decision that an invention can be obvious if the pathway to that result was obvious to try, even if the particular result was not predicted.  Second, the article shows that unexpected properties becoming known after the patent application are not secondary considerations permitted to be considered by the Supreme Court’s 1966 decision in Graham v. Deere.  Third, this article shows that the Federal Circuit’s periodic reference to rebuttal of a prima facie case of obviousness in ex parte patent applications is an outmoded doctrine originating before the Patent Act of 1952 that has no relevance in determining substantive obviousness today in patent infringement litigation.  The article concludes that the position of Judge Dyk is correct that in determining obviousness courts may not consider knowledge of properties arising after the patent application.

Bypassed: The Kirtsaeng Decision’s Underwhelming Impact on Exhaustion Members Only
David Tseng
The Kirtsaeng decision is significant because the Supreme Court applied the first sale/exhaustion provision (17 U.S.C. § 109) of the U.S. Copyright Act extraterritorially, resolving a lingering Circuit split. This decision, however, is unlikely to have any profound impact on the current intellectual property framework with respect to first sale/exhaustion doctrine in the United States. This Article explains why by first examining the important decisions on exhaustion in the United States in both patent and copyright, then by discussing the circumvention of the Kirtsaeng decision through licensing (especially with respect to digital goods) and the lack of applicability of Kirtsaeng in the patent context.

Student Notes

The Fate of Small‐Molecule Natural Products After Myriad Genetics Members Only
David Knapp
The Supreme Court's decision in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., has altered the landscape of subject matter eligibility in the United States. Claims to small molecule natural products, in particular, now face rejection for ineligibility under the Supreme Court's holding, as well as under the USPTO's new examination guidelines that have followed the Court's decision. A historical perspective of the eligibility of small molecules, arguments for their maintained eligibility, and a discussion of the impact of denying the eligibility of claims directed to small molecule natural products on the pharmaceutical industry are presented.

Searching for More Efficient Piracy Protection Members Only
Matthew Bernstein
Although there are numerous benefits to the growth of the Internet, there have also been some drawbacks in terms of copyright protection online. Search engines have become central to the Internet experience, and often serve as a starting place for Internet searches for copyrighted works. As a consequence, search engines have become facilitators for those who engage in infringement and piracy of copyrighted works. This article evaluates the current interplay between search engines and copyright holders and explains that the current environment is contrary to the goals of the Digital Millennium Copyright Act. Further, it suggests that search engines should consider entering into voluntary agreements with copyright holders in order to work together to mitigate the effects of copyright infringement on the Internet.

Applying the Appropriate APA Standard of Review to § 1052(a)Disparagement Findings of the Trademark Trial and Its Appeal Board in a District Court: The Washington Redskins and Its Trademarks Members Only
Andrew Klemash
In 2014, the Trademark Trial and Appeal Board (TTAB) canceled six federally registered trademarks belonging to the Washington Redskins, a storied NFL professional football franchise, because the marks’ use of the word “redskin” was found to be disparaging under § 1052(a) of the Lanham Trademark Act. This cancellation was the second time the TTAB has cancelled these six marks on the same disparagement grounds. The previous TTAB cancellation was overturned by the District Court for the District of Columbia (D.C. District Court) on the grounds that the TTAB’s finding of disparagement did not survive the Administrative Procedure Act (APA) standard of review for TTAB findings and that laches barred the plaintiffs’ claim. However, the D.C. District Court questionably applied the selected APA “substantial evidence” standard of review to the findings made by the TTAB and arguably gave inappropriate deference to those findings. In the recent cancellation, the TTAB adopted almost all of the prior cancellation’s record, was more elaborate and specific in its findings, and cancelled the same marks on the same grounds. The new litigation will be resolved in the District Court for the Eastern District of Virginia (Eastern District of Virginia) because of a legislative jurisdictional change, creating the peculiar circumstance where a remarkably similar case is presented to a new district court that can set precedent for all future § 1052(a) cases . These unusual circumstances create an opportunity for the Eastern District of Virginia to reevaluate the proper application of deference to TTAB § 1052(a) findings under the APA “substantial evidence” standard of review. This Note proposes that the Eastern District of Virginia should set appropriate precedent for the weight to be given § 1052(a) findings by the TTAB under the APA “substantial evidence” standard of review by offering those findings the correct amount of deference and depart from the less deferential holding of the D.C. District Court in the prior cancellation litigation.