2009 AIPLA Reports

AIPLA Reports is an exclusive online information service that delivers substantive, to the point, and useful information to all AIPLA members. Substance, clarity, and brevity are the hallmarks of this newsletter. Cases, rulemaking, legislation, and industry developments are carefully distilled and reported. [Members benefit - Login Required]

AIPLA Reports	Topic(s) include:
December 22, 2009	President Obama Signs Bill Appropriating $1.887 Billion to PTO Board Rules for Ex Parte Appeals Are Published for Further Comment PTO Notices Cover PCT, Quality, Appeals, and Online Transactions Ordinary Observer Is Anticipation Standard for Design Patents, International Seaway Trading Corp. v. Walgreens Corp., Fed. Cir., No. 2009-1237, 12/17/09. Patent Holding Company Fails to Disavow Controversy for DJ Action, Hewlett-Packard Co. v. Acceleron LLC, Fed. Cir., No. 2009-1283, 12/4/09. Satellite Expiration Date Is Extended Two Months Mandamus Writs on Venue Granted in Two Texas Cases, In re Hoffman-La Roche Inc., Fed. Cir., Misc. No. 911, 12/2/2009; In re Nintendo, Fed. Cir., Misc. No. 914, 12/17/2009.
December 9, 2009	En Banc CAFC Hears Argument in Written Description Requirement Case, Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., Fed. Cir., No. 2008-1248, oral argument 12/7/09. Pilot Program Will Accelerate Applications on Green Technologies Small Entities Can Abandon Certain Applications for Special Status House Passes Bill to Reauthorize and Improve Satellite Compulsory License AIPLA Amicus Brief Urges Adherence to Rule of Reason in Misuse Case, Princo Corp. v. U.S. International Trade Commission, Fed. Cir., No. 2007-1386, brief filed 12/4/09. New ICANN Rules on Dispute Resolution Are Effective March 1, 2010
November 10, 2009	Skeptical Court Hears Oral Argument on Patent Eligibility of Business Methods, Bilski v. Kappos, U.S., No. 08-964, 11/9/09.
October 27, 2009	CAFC En Banc Case Looks for Patent Misuse Effect of Agreement Not To License, Princo Corp. v. U.S. International Trade Commission, Fed. Cir., No. 2007-1386, 10/13/09. Transmission of Copyrighted Ringtones Is Not Public Performance, In re Application of Cellco Partnership, d/b/a Verizon Wireless, DCNY, No. 09 Civ. 7074, 10/14/09. Final PTO Rule Changes Signature Requirements for Trademark Practice PTO Requests Comments on Proposed Patent Ombudsman Program PTO Notice Provides Guidance for Use of EFS-Web Project CAFC Invites Comment on Revisions to Rules of Practice
October 8, 2009	PTO Will Rescind Claiming and Continuations Rules Package
September 29, 2009	Government Brief Says Methods of Organizing Human Activity Are Not Patentable, Bilski v. Kappos, Fed. Cir., No. 2008-964, 9/25/09. AIPLA Amicus Brief Urges En Banc Clarification of ‘Obvious to Try’, Bayer Schering Pharma AG v. Barr Laboratories, Fed. Cir., No. 2008-1282, 9/28/09. Board of Appeals Decided 7,000 Cases in 2009, But Projects Backlog Increases President Obama Nominates Victoria Espinel as IP Czar
September 19, 2009	Method Claim for Treating Crohn’s Disease Is Patentable Subject Matter, Prometheus Laboratories, Inc. v. Mayo Collaborative Services, Fed. Cir., No. 2008-1403, 9/16/09 $358 Million Damages Verdict Lacks Supporting Evidence, Requires New Trial, Lucent Technologies, Inc. v. Microsoft, Fed. Cir., No. 2008-1485, 9/11/09
August 31, 2009	TTAB Decisions Improperly Reduced Fraud Standard to Simple Negligence, Bose Corp. v. Hexawave, Inc., Fed. Cir., No. 2008-1448, 8/31/09
August 24, 2009	En Banc CAFC to Consider Whether Written Description Is Separate from Enablement, Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., Fed. Cir., No. 2008-1248, 8/21/09 order. Briefing Schedule Is Set for When Tafas Stay Expires, Tafas v. Kappos, Fed. Cir., No. 2008-1352, 8/21/09
August 20, 2009	En Banc CAFC Holds § 271(f) Does Not Apply to Process Claims, Overruling Precedent, Cardiac Pacemakers Inc. v. St. Jude Medical Inc., Fed. Cir., No. 2007-1296, 8/19/09
July 27, 2009	Parties in Tafas Litigation Joinly Seek Stay Until 60 Days after Kappos Is Confirmed As Director, Tafas v. Doll, Fed. Cir., No. 2008-1352, motion filed 7/24/09
July 24, 2009	PTO Director Designate David Kappos Will Have Confirmation Hearing 7/29/09 Patent Practitioner Maintenance Fee Will Not Be Payable before 9/30/09 Bill Headed for White House Rescues PTO Patent Operations from Revenue Downturn Copyright Office Fee Increase Goes into Effect in August 1, 2009 AIPLA President Rea Testifies at House Hearing on Biologics Legislation AIPLA Amicus Brief Argues Issue Preclusion Does Not Automatically Apply to Claim Construction, Shire LLC v. Sandoz, Inc., Fed. Cir., No. 2009-1180, brief filed 7/22/09 PTO Memorial Service Will Honor Rene Tegtmeyer
July 7, 2009	En Banc Federal Circuit Will Rehear GSK-Tafas Case , Tafas v. Doll, Fed. Cir., No. 2008-1352, 7/6/09 order Senate-Passed Bill Would Address PTO Revenue Troubles Supreme Court To Review Antitrust in Trademark Licensing Case, American Needle, Inc. v. National Football League, U.S., No. 08-661, 6/29/09 Bill Would Exempt Repair Components from Design Patent Infringement TTAB Encourages Parties to Use ‘Accelerated Case Resolution’ Rule on Amending International Application Is Revised
June 19, 2009	AIPLA Board Member David Kappos Is Nominated as USPTO Director AIPLA Past President James Pooley Will Serve As WIPO Deputy Director General Bill Allowing PTO to Retain and Spend Collected Fees Is Passed by House Webcaster Settlement Bill Is Cleared for White House AIPLA Amicus Brief Urges En Banc Federal Circuit Rehearing of GSK-Tafas Decision, Tafas v. Doll, Fed. Cir., No. 2008-1352, brief filed 6/17/09 AIPLA Argues to Supreme Court Copyright Registration Is Not Jurisdictional, Reed Elsevier, Inc. v. Muchnick, U.S., No. 08-103, brief filed 6/8/09 PTO Extends Period for Public Comment on Deferred Examination
May 20, 2009	En Banc Federal Circuit Says Process Limits Product Claim, Abbott Laboratories v. Sandoz, Inc., Fed. Cir., No. 2007-1400, and Lupin Ltd. v. Abbott Laboratories, Fed. Cir. No. 2007-1446, 5/18/09 Federal Circuit Is Skeptical of PTO Fraud Standard for Trademark Applicants, Bose Corp. v. Hexawave, Inc., Fed. Cir., No. 2008-1448, oral argument 5/6/09 AIPLA Board of Directors Approve Famous Marks Resolution AIPLA Letter Critiques NIH Report on Gene Patents AIPLA Letter Responds to FTC Questions on IP Marketplace
May 6, 2009	Remand Orders for Lack of Supplemental Jurisdiction Are Appealable, Carlsbad Technology Inc. v. HIF Bio, Inc., U.S., No. 07-1437, 5/5/09 Federal Circuit Backs Away from ‘Imminent Importation’ Jurisdiction for ITC, Amgen, Inc. v. U.S. International Trade Commission, Fed. Cir., No. 2007-1014, 4/30/08 KSR Displaced ‘Obvious to Try’ Discussion of In re Deuel, In re Kubin, Fed. Cir., No. 2008-1184, 4/3/09 Sale of Trademark Terms by Google Was ‘Use in Commerce’, Rescuecom Corp v. Google Inc., 2d Cir., No. 06-4881-cv, 4/3/09
April 3, 2009	Senate Judiciary Committee Approves Amended Patent Reform Bill 15-4
April 1, 2009	Senate Judiciary Committee Moves Toward Consensus on Patent Reform
March 21, 2009	Claims Rules Survive, Continuations Rules Struck Down, Tafas v. Dudas, Fed. Cir., No. 2008-1352, 3/20/09 House Passes Legislation on Pilot Program for Judges in Patent Cases Locke Nomination Is Approved by Senate Committee
March 4, 2009	Senate and House Members Present Bipartisan/Bicameral Patent Reform Proposals Supreme Court Will Decide if Copyright Registrations Are Needed for Settlements, Reed Elsevier, Inc. v. Muchnick, U.S., No. 08-103, 3/2/09 Administration and Appropriators Agree on PTO Retention of Fees
February 18, 2009	Questions of Patent Quality Are Addressed at PPAC Meeting Deferred Examination Is Considered in PTO FTC Hearing Explores Patent Damages Issues
February 4, 2009	Government Contractors Are Not Immune For Infringements Arising Abroad, Zoltek Corp. v. United States, Ct. Fed. Cls., No. 96-166, 1/23/09. Legislation Is Introduced on Pilot Program for Judges in Patent Cases AIPLA Argues Section 101 Was Misapplied to Method of Treatment Claim, Prometheus Laboratories, Inc. v. Mayo Collaborative Services, Fed. Cir., No. 2008-1403, filed 1/22/09. AIPLA Argues Section 271(f) Does Not Apply to Process Claims, Cardiac Pacemakers Inc. v. St. Jude Medical Inc., Fed. Cir., No. 2007-1296, filed 1/30/09. PTO Will Hold Roundtable Discussion on Deferred Examination Former PTO Director Jon Dudas Joins Foley & Lardner Firm
January 17, 2009	En Banc CAFC Orders Rewrite of Comiskey Opinion over Disputes Alternative on Grounds, In re Comiskey, Fed. Cir., No. 2006-1286, en banc order 1/13/09, revised panel opinion 1/13/09. Supreme Court Requests Government Views in Copyright Case on Remote Storage DVR, Cable News Network Inc. v. CSC Holdings, Inc., U.S., No. 08-448, 1/12/09.

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