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Judicial Advocacy Archives

SmithKline Beecham Corp. v. Dudas, E.D. Va., filed 12/27/07

AIPLA in a December 27, 20007, amicus brief told the District Court for the Eastern District of Virginia that the retroactive application of PTO final rules changing continuation and claims practice punish applicants who complied with and made decisions based on established law. The brief was filed in support of the plaintiffs' request for a summary judgment that the rules as issued are improperly retroactive because they impair existing trade secret rights and impose new duties on completed transactions.

Quanta Computer, Inc. v. LG Electronics, Inc., U.S. Sup. Ct., filed December 6, 2007

AIPLA in a December 6, 2007, amicus brief urged the Supreme Court to apply the patent exhaustion doctrine in a way that does not preclude an infringement action against a purchaser where the sale made clear that downstream licenses are not being granted but rather must be separately negotiated. Thus, when an accused infringer has clear notice before entering into any purchase of potential liability as an infringer, his actions should not be exculpated. The effect of any such restrictions or conditions imposed by the patent owner or its licensees is not violative of the antitrust laws. Where these notice provisions are met, it should not matter whether the patent owner chose to maximize return by charging the parties at each level of supply an individualized royalty or by requiring a complete royalty payment from the first licensee (thereby exhausting patent rights). Whether the first transaction is a sale or license or covenant not to sue, it should not change these conditions or render a sale unauthorized.

SmithKline Beecham Corp. v. Dudas, E.D. Va., filed 10/25/07

AIPLA in an October 25, 20007, amicus brief urged the District Court for the Eastern District of Virginia to grant plaintiff’s pending motion for a temporary retraining order and preliminary injunction to prevent the implementation of recent USPTO rules while the case proceeds on its merits, arguing the retroactive nature of the rules once implemented will cause irreparable harm to patent applicants throughout the country and over a wide spectrum of technologies. The brief addresses the irreparable harm caused by the retroactive impact of applying the new rules to pending patent applications, arguing those applications were filed, and substantial resources committed, in reliance on fundamental principles of patent law that have applied for more than a century. The brief argues that a delay in implementing the new rules pending resolution on the merits, by contrast, should not adversely impact PTO operations or policy.

Egyptian Goddess, Inc. v. Swisa, Inc., Fed. Cir., filed October 9, 2007

AIPLA in an October 9, 2007, amicus brief urged the Federal Circuit to reconsider its ruling that the point of novelty that a design patent owner must identify in an infringement suit must be more than trivially different from design features in the prior art. According to the brief, this new rule defeats the statutory presumption of validity by requiring the patentee to prove non-obviousness after already satisfying the PTO on that issue. Supporting the patentee's request for a rehearing and rehearing en banc, the brief points out that the "points of novelty" test for proving infringement requires only a showing of "novelty."

ITC Ltd. v. Punchgini, Inc., NY Ct. App, filed October 2, 2007

AIPLA in an October 2, 20007, amicus brief urged the New York Court of Appeals to recognize that New York common law recognizes the “well-known marks” doctrine, enabling the owner of a foreign mark that is well known, but not used in New York, to prevent unauthorized uses of its mark in a manner likely to confuse or deceive consumers. The case is in the New York high court upon the certification of questions from the Second Circuit, which concluded that the well-known marks doctrine is not encompassed by the Lanham Act.

ITC Ltd. v. Punchgini, Inc., U.S. Sup. Ct., filed July 25, 2007

AIPLA in a July 25, 20007, amicus brief urged Supreme Court review of a Second Circuit's decision that federal law does not recognize the "well-known marks" doctrine as an exception to the general territoriality rule that priority of trademark rights depends solely upon use in U.S. commerce. Under the well-known marks doctrine, according to the brief, a foreign mark's reputation in the United States supports its enforcement in U.S. courts even though that mark is not in use in the United States. Without taking a position on which party should prevail on the merits, the brief argued that the Second Circuit's decision on the well-known marks doctrine directly conflicts with the decision of the Ninth Circuit in Grupo Gigante S.A. De CV v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004), and should be reversed.

In re Bilski, Fed. Cir., filed April 30, 2007

AIPLA in an April 30, 2007, amicus brief argued to a Federal Circuit panel that the proper test for determining what constitutes statutory subject matter under 35 U.S.C. § 101 is set forth in Diamond v. Diehr, 450 U.S. 175 (1981). Specifically, the determination of whether a process claim incorporating an abstract idea is statutory subject matter depends on whether the claimed process, when viewed as a whole, recites a practical application with a useful result. While a transformation of physical subject matter from one state to another may be relevant in that determination, there should be no statutory subject matter requirement that claims incorporating abstract ideas include a strictly physical transformation.

In re Seagate, filed March 19 2007

AIPLA in a March 19, 2007, amicus brief argued to the en banc Federal Circuit that the standards for finding willful infringement should be reserved for infringers guilty of truly “reprehensible” conduct. The willfulness determination, according to the brief, should focus on subjective bad faith of accused infringers and apply the same criteria used for imposing punitive sanctions in other areas of tort law. On the subject of waiver, the brief explains that forcing disclosure of communications with trial counsel, not to mention trial counsel’s mental impressions and trial strategies, would effectively deny accused infringers effective assistance of counsel at trial. Facing such a harsh result, trial counsel would have no choice but to exclude clients from important strategic considerations.

Microsoft Corp. v. AT&T, Corp., filed December 15, 2006

AIPLA on December 15, 2006, filed an amicus brief in the Supreme Court, arguing that the Federal Circuit misinterpreted section 271(f) of the Patent Act as covering software copies made abroad from a master disk supplied from the United States. While the appellate court correctly concluded that software can be a "component" of a patented invention within the meaning of section 271(f), it incorrectly held that copying was "subsumed" in the act of supplying software, and that Section 271(f) liability for foreign-made copies is triggered by sending a single copy abroad with the intent that it be replicated.

KSR Int'l v. Teleflex Inc., filed October 12, 2006

AIPLA filed an amicus brief in the Supreme Court urging that proof of obviousness for a combination patent continue to require evidence that there was a reason—a teaching, suggestion, or motivation—for combining prior art in the manner claimed. The brief argues that the current, well-defined analytical framework draws upon principles found in Supreme Court case law and is of vital import to the patent system.

Medimmune, Inc. v. Genentech, Inc., et al., filed July 26, 2006.

The Court should affirm the Federal Circuit decision that a lack of sufficient immediacy and genuine adversity precluded Declaratory Judgment Act jurisdiction in this case, but should not adopt a bright-line rule that such jurisdiction for a licensee's challenge to patent validity requires the licensee to breach the patent license. A concrete and immediate dispute under the Constitution may also exist where the licensor and licensee engage in a legitimate debate over the validity or scope of the licensed patent rights, due to, for example, an unforeseen change in circumstances, and the licensor makes clear that it will promptly sue if the licensee fails to make timely payments according to its interpretation of the license.

Lawman Armor Corporation v. Winner International, LLC and Winner Holding LLC, filed April 14, 2006.

In its earlier decision, the CAFC stated that a novel combination of old elements is insufficient to constitute a design patent’s point of novelty. This could be interpreted to be a shift in well-settled design patent jurisprudence and at odds with previous CAFC decisions. AIPLA argues in this brief that the Court should clarify that the novel visual appearance of a combination of old elements can constitute a design patent’s point of novelty.

Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., filed February 6, 2006.

In an amicus brief, AIPLA argued that the Supreme Court should decline to consider issues of patentable subject matter suggested in the question for review but not raised or considered below. If the Court decides to consider this issue, it should leave unchanged the broad scope of patentable subject matter described in Diamond v. Diehr.

eBay Inc. v. MercExchange, L.L.C., filed January 17, 2006

In a joint amicus brief to the Supreme Court, AIPLA and the Federal Circuit Bar Association argue that Federal Circuit’s “general rule” that a permanent injunction will normally issue in a patent case once validity and liability have been established is fully consistent with 35 U.S.C. §283 and is well-grounded in the traditional factors governing the issuance of injunctions. The brief further argues in favor of adhering to the Supreme Court’s 1908 ruling in Continental Paper Bag that permanent injunctions are available to patentees who do not make the product or use the process covered by the patent.

Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., filed November 11, 2005

In a joint amicus brief to the Federal Circuit, AIPLA and the Federal Circuit Bar Association urge en banc reconsideration of Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., which applied 35 U.S.C. §271(f) to a process patent.

Illinois Tool Works, Inc and Trident, Inc v. Independent Ink, Inc., filed August 4, 2005

AIPLA on August 4, 2005, filed an amicus brief on the merits in Illinois Tool Works, Inc. v. Independent Ink, Inc. (No. 04-1329), in support of neither party, arguing that the mere existence of a patent should not create any presumption of market power in a relevant market to prove an antitrust violation under Section 1 of the Sherman Act.

Jan K. Voda v. Cordis Corp., filed June 15, 2005

The CAFC is considering whether jurisdiction exists over foreign patent law claims based on federal supplemental jurisdiction statute, 28 U.S.C. §1367(a). AIPLA argues that in this circumstance federal courts lack supplemental jurisdiction over the assertion of the patentee of claims involving a foreign patent claims.

Illinois Tool Works, Inc and Trident, Inc v. Independent Ink, Inc., filed May 4, 2005

AIPLA filed this amicus brief in support of the Petitioners' request to the Supreme Court to grant certiorari to review the decision of the Court of Appeals for the Federal Circuit in this case. In finding a Sherman Act Section 1 Antitrust violation based on the tying of a patented product to an unpatented product, the CAFC panel held that the mere existence of a patent on a product creates a rebuttable presumption that the patent owner has market power in the relevant market for the patented product itself. AIPLA argues in this brief that the mere existence of a patent should not create any presumption of market power in a relevant market.

Integra Lifesciences I, Ltd. v. Merck KGaA, filed February 22, 2005

The Federal Circuit in Integra Lifesciences I, Ltd. v. Merck KGaA gave an improperly narrow interpretation to Section 271(e)(1) of Title 35, the infringement exemption for uses of patented inventions that are reasonably related to information submissions to the Food and Drug Administration. The ruling appears to limit the safe harbor protection to clinical studies using human subjects while excluding many other types of studies typically included in applications for FDA approval, including preclinical in vitro and animal studies, comparative studies, and safety profiling studies, excluding studies that are embraced by the plain language of the statute.

Metro-Goldwyn-Mayer Studios INC v. Grokster, LTD, filed January 2005

AIPLA argues that the Supreme Court recognize that “contributory infringement" in copyright law includes “active inducement,” and that a showing of “substantial noninfringing uses” is not a defense to “active inducement.” AIPLA requests that the Court remand the case for a determination as to whether “active inducement” can be established under the facts of this case.