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Judicial Advocacy 2011

Mayo Collaborative Services v. Prometheus Laboratories, Inc., U.S., No. 10-1150, amicus brief filed 11/7/2011.

​AIPLA, in a November 7, 2011 amicus brief, argued to the Supreme Court that a patent claim on a method for treating Crohn’s disease is patentable subject matter under 35 U.S.C. 101. The brief refutes the argument that the method claims a law of nature, pointing out that, considered as a whole, the method simply uses an observed correlation of an induced metabolite level and the required drug dosage to claim a particular diagnostic test. The concerns raised by the Petitioner are policy concerns for Congress demonstrated most recently in the America Invents Act that it is able to do so.

Kappos v. Hyatt, U.S., No. 10-1219, amicus brief filed 10/25/2011.

​AIPLA, in an October 25, 2011 amicus brief, argued to the Supreme Court that a district court reviewing a USPTO decision on a patent application under 35 U.S.C. §145 may receive and assess evidence that was not previously presented to the agency in the proceeding below. The brief rejects as unfounded the government's view that that the district court may not consider such evidence if the parties had a reasonable opportunity to introduce it in the PTO but failed to do so. It also rejects the government position that, if new evidence is considered, the district court must have a "thorough conviction" that the PTO erred in order to disturb the PTO’s conclusions.

Golan v. Holder, U.S., No. 10-545, amicus brief filed 8/10/2011.

​AIPLA, in an August 10, 2011 amicus brief, argued to the Supreme Court that the restoration of copyrights for certain foreign works under 17 U.S.C. 104A, enacted by Section 514 of the Uruguay Round Agreements Act, violated neither the First Amendment nor Article I, Section 8, clause 8 of the Constitution. The brief explains that Section 104A implemented the TRIPs requirement to fully implement the Berne Copyright Convention.  It argues that the statute is a limited provision that makes no changes to the "traditional contours" of copyright law—the Copyright Act's fair use provisions and its protection for expression only and not ideas—which inherently protect First Amendment rights.  The brief also argues that the limited provisions of Section 104 are well within the type of extension and expansion of copyright protection that Congress has legitimately made throughout the history of the copyright law.

McKesson Technologies, Inc. v. Epic Systems Corporation, Fed. Cir., No. 2010-1291, amicus brief filed 7/1/2011.

​AIPLA, in a July 1, 2011 amicus brief, argued to the en banc Federal Circuit that inducement or contributory infringement liability for separate entities performing separate steps of a method patent claim requires only that all claim steps are performed to establish direct infringement, and that the statutory terms of Section 271(b) or (c), Title 35 are proven.  While proof of direct infringement is a necessary predicate for proving indirect infringement, Federal Circuit decisions have mistakenly conflated proof of infringement with proof of liability, requiring that all steps in the method claim be performed by a "single entity" or by one whose actions could be attributed to the named party by a formal agency relationship.  Infringement may be proven with evidence that all steps of a method claim were performed, no matter how many separate actors performed the separate steps.  Liability should be separately determined by traditional tort law principles of joint tortfeasance, looking at the substantiality of the named actor's participation in producing the harm of infringement.

Akamai Technologies, Inc. v. Limelight Networks, Inc., Fed. Cir., No. 2009-1372, amicus brief filed 7/1/2011.

​AIPLA, in a July 1, 2011 amicus brief, argued to the en banc Federal Circuit that the so-called "single entity" rule for deciding direct infringement of a method patent claim, where all of the steps are performed collectively but no single party performs all of the claims, is based on an incorrect construction of 35 U.S.C. 271(a) and of the statutory structure of Section 271 as a whole.  In concluding that only principles of agency law are necessary to determine such infringement liability, the Court has mistakenly strayed from the traditional tort law basis of patent infringement and has created loopholes for method claim infringement that drastically reduce the exclusive rights conferred by validly issued patents.

Microsoft Corp. v. i4i Limited Partnership, U.S., No. 10-290, amicus brief filed 2/2/2011.

AIPLA, in a February 2, 2011 amicus brief, argued to the Supreme Court that the clear and convincing standard for proof of patent invalidity is the correct evidentiary standard, whether or not a validity challenge turns on prior art that was not before the examiner. The brief in support neither party presents extensive historical support for the proposition that the heightened standard is a judicial rule that goes back to 19th century Supreme Court decisions, addressing the evidence problem of oral testimony and assertions of public use from the distant past. The brief also makes the point that the clear and convincing standard is part of the quid pro quo with the inventor in that the full disclosure of the patented invention can enable the easy fabrication of evidence by one making a false claim of prior invention.

Global-Tech Appliances Inc. v. SEB S.A., U.S., No. 10-6, merits amicus brief filed 1/6/2011.

AIPLA, in a January 6, 2011 amicus brief, argued to the Supreme Court that liability for inducing patent infringement under 35 USC 271(b) does not require proof that the inducer had knowledge that the acts induced will violate patent rights, but only that inducer actively and deliberately encouraged the particular acts found to be directly infringing. The brief points out that Congress included no knowledge requirement in either the direct infringement provision of Section 271(a) or in the inducement provision of Section 271(b), and that it would be incongruous to hold direct infringers liable without regard to knowledge of the patent violated while immunizing those who encourage and profit from those very infringing acts.