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Judicial Advocacy 2009

Princo Corp. v. U.S. International Trade Commission, en banc Fed. Cir., No. 2007-1386, filed December 4, 2009.

AIPLA, in a December 4, 2009 amicus brief, argues to the en banc Federal Circuit that patent misuse allegations arising from license restrictions on pooled patents must be analyzed under a “rule of reason” approach. The brief addresses the question of whether a finding that there was no illegal tying resulting from the pooled patent agreements precludes antitrust liability for an agreement not to license outside the patent pool a particular patent on allegedly competing technology. According to the brief, this question must be decided under a "rule of reason" analysis and not on a per se basis. It also urges that the Court clearly place the burden of proving anticompetitive effect under the rule of reason on the party invoking the patent misuse defense or asserting antitrust claims (in this case, Princo).
 

Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.,, en banc Fed. Cir., No. 2008-1248, filed November 19, 2009.

AIPLA, in a November 19, 2009 amicus brief, argues that Section 112, ¶1 of the Patent Act contains a written description requirement that is distinct from, but related to, an enablement requirement. It further argues that the purpose and scope of the written description requirement is to act in concert with the other requirements of Section 112 to advance the disclosure objectives of the patent system. In the patent validity context, the requirement should be applied not as an independent measure of compliance with the disclosure requirement of Section 112, but together with the other specification requirements of enablement under Section 112, ¶1, and identification of the invention in the claims under Section 112, ¶2. Compliance with Section 112 should therefore be judged by the sufficiency of the disclosures as a whole, not by the sufficiency of the disclosure under any one requirement.
 

Bayer Schering Pharma AG v. Barr Laboratories, Fed. Cir., No. 2008-1282, filed September 28, 2009.

AIPLA, in a September 28, 2009 amicus brief, supports a petition for en banc review of a Federal Circuit panel ruling that a “viable alternative” in a prior art rendered a patented method “obvious to try” and thus invalid under Section 103 of the Patent Act. The AIPLA brief seeks a clarification of the obvious-to-try analysis in light of KSR. It argues that the introduction of “a viable alternative” test confuses the analysis and undermines the requirement of KSR that the prior art alternative be a “predictable” solution. The panel majority’s conclusion that the option in this case was “viable” appears to have been based on hindsight reasoning that was based upon the very work that produced the invention.
 

Agilent Technologies, Inc. v. Affymetrix, Inc., Federal Circuit, filed August 18, 2009.

AIPLA, in an August 18, 2009 amicus brief, supported a petition for en banc review of a Federal Circuit panel ruling on claim construction in interferences. According to the brief, the panel incorrectly required consideration of the specification of the copied patent to decide written description issues, and consideration of the specification of the copying application to decide patentability over the prior art. The brief argues that the panel applied an obsolete rule that dates back to a period before issues of validity and priority were merged into a single proceeding.
 

Bilski v. Doll, Supreme Court, filed Aug. 6, 2009.

AIPLA, in an August 6, 2009 merits amicus brief, argued to the Supreme Court that the Federal Circuit's "machine or transformation" test for the subject matter eligibility for process patent protection ignores the clear Congressional intent that any process be patent-eligible and misinterprets Supreme Court precedent. According to the brief, this test is derived from dictum in Supreme Court case law and is tied to the vocabulary of technologies developed in earlier ages. As such, it is backward-looking and ill-fitted to future discoveries and technologies as yet unimagined.
 

Shire LLC v. Sandoz, Inc., Federal Circuit, filed July 22, 2009.

AIPLA, in a July 22, 2009 amicus brief, argued to the Federal Circuit that issue preclusion should not be applied in a per se fashion to automatically bar subsequent courts from making their own independent claim interpretation and to automatically bind later infringement proceedings to prior district court claim constructions. Rather, district courts should apply issue preclusion to claim construction in the same fashion it is applied to other issues, according to the brief, with flexibility and discretion after analyzing the relevant factors on a case-by-case basis, according to the brief.
 

Tafas v. Doll, Federal Circuit, filed June 17, 2009.

AIPLA, in a June 17, 2009 amicus brief, argued to the Federal Circuit that a panel of the court applied the incorrect test in determining that PTO had statutory authority to issue rules limiting patent claiming practice. Urging en banc review of the 2-1 panel decision, the brief argued that the panel's conclusion that the rules were procedural and non-substantive inadequately considered the impact which the rules will have on rights and obligations of patent applicants under the Supreme Court's ruling in Chrysler Corp. v. Brown.
 

Reed Elsevier, Inc. v. Muchnick, Supreme Court, filed June 8, 2009.

AIPLA, in a June 8, 2009 amicus brief argued to the Supreme Court that the Second Circuit in this case misinterpreted 17 U.S.C. § 411(a) by treating the requirement of copyright registration as a condition precedent to subject matter jurisdiction over an action for copyright infringement. On this basis, it incorrectly barred an action for infringement where some of the works in suit had been registered at the Copyright Office and some had not.
 

Cardiac Pacemakers Inc. v. St. Jude Medical Inc., Federal Circuit en banc, filed April 15, 2009.

AIPLA, in an April 15, 2009 amicus brief filed jointly with the Federal Circuit Bar Association, argued to the en banc Federal Circuit that 35 U.S.C. §271(f), barring the supply of components abroad for combination into a device that infringes a patented invention, does not apply to process claims. The brief argues that the panel ruling to the contrary in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005), must be overturned as inconsistent with precedent, as based on an incorrect statutory construction, as inconsistent with the legislative history of the statute, and as substantially undermined by Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007).
 

Bilski v. Doll, , Supreme Court, U.S. No. 08-964, supporting cert. pet., filed March 2, 2009.

AIPLA, in a March 2, 2009 amicus brief filed in support of a petition for certiorari, argued to the Supreme Court that the en banc Federal Circuit's recently announced "machine or transformation" requirement for determining the patent eligibility under 35 U.S.C. 101 of process inventions misinterprets Supreme Court precedents and unwisely reduces incentives for new types of innovation. The brief points out that the controlling standards for this question are found in legislative history and in case law that excludes claims to laws of nature, natural phenomena, and abstract ideas, and that there is no logical connection between these criteria and an invention's connection to a machine or its transformation of some material. According to the brief, the Federal Circuit test is backward looking and will restrict rather than promote new innovative technologies, whereas the Patent Act and Supreme Court precedent uniformly reflect a wise openness to the unanticipated innovations of the future.
 

Cardiac Pacemakers Inc. v. St. Jude Medical Inc., Federal Circuit, filed January 30, 2009.

AIPLA, in a January 30, 2009 amicus brief filed jointly with the Federal Circuit Bar Association, argued to the Federal Circuit that that 35 U.S.C. §271(f), barring the supply of components abroad for combination into a device that infringes a patented invention, does not apply to process claims. The brief argues that the panel ruling to the contrary in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005), must be overturned as inconsistent with precedent, as based on an incorrect statutory construction, as inconsistent with the legislative history of the statute, and as substantially undermined by Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007)
 

Prometheus Laboratories, Inc. v. Mayo Collaberative Services, Federal Circuit, filed January 22, 2009.

AIPLA, in a January 22, 2009 amicus brief argued to the Federal Circuit that the district court improperly applied 35 U.S.C. 101 to find no patent-eligible subject matter in claims to a method used in treating Crohn's disease. The brief argues (1) that the claimed methods meet the machine-or-transformation test in Bilski, (2) that the district court overreacted to the dissenting opinion in the Supreme Court's Lab. Corp decision, and (3) that this case is distinguishable from other decisions finding no patent-eligible subject matter.