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CPLRG™ 0081 - Already, LLC. v. Nike, Inc. - Jan. 9, 2013

Already v. Nike, 133 S. Ct. 721 (2013) (Roberts; Kennedy, concurring).  For the Court’s slip opinion, click here.AlreadyNike01092013

Already addresses the rights of parties who have been initially, and allegedly improperly, charged with infringement of an intellectual property right to continue a counterattack seeking a declaratory judgment that the right is invalid even though the rights holder has provided a covenant not to sue.

Already directly involves trademarks, not patent law.  However, the Court’s analysis was clearly framed as applicable to intellectual property rights generally, including patents.  Indeed, in some respects, the Court’s language is more appropriate to patent litigation than is to trademarks.

The Court began by stating: “The question is whether a covenant not to enforce a trademark against a competitor’s existing products and any future `colorable imitations’ moots the competitor’s action to have the trademark declared invalid.”  It held that the answer to the question depends on application of the “voluntary cessation” doctrine.  Under that doctrine, a party asserting that its voluntary compliance moots a case bars a “formidable burden.”  The burden is to show that ” `it is absolutely clear the allegedly wrongful behavior could not reasonably be expected to recur.’ Friends of the Earth, Inc. v. Laidlaw Environmental Services (TOC), Inc., 528 U. S. 167, 190 (2000).”

In this case, an accused infringer asserted a claim for a declaratory judgment that a trademark owner’s mark was invalid.  The trademark owner’s “voluntary cessation” by its covenant not to sue made it absolutely clear that its alleged wrongful behavior, that is, an assertion of infringement of an allegedly invalid trademark, could not “reasonably be expected to recur.”  The covenant was broad, precluding assertions against the accused infringers’ present products and any future products that “colorably imitated” the present products.

Once the trademark owner demonstrated that the covenant broadly covered the activities giving rise to the controversy, it became incumbent on the accused infringer to indicate that it “engages in or has sufficiently concrete plans to engage in activities not covered by the covenant.”  The accused infringer did not identify (or assert that it planned to market) a product that arguably infringed but that was not covered by the covenant not to sue. Read CPLRG™ 0081

CPLRG™ 0080 - Kappos v. Hyatt - Apr. 18, 2012

Kappos v. Hyatt, 132 S. Ct. 1690 (2012) (Thomas, J.; Sotomayor, concurring).  For a slip opinion, click here. KapposHyatt.USSC

Hyatt deals with judicial review of PTO rejection of a patent applicant’s claim.  The Court  holds that an applicant can bring a “civil action” in a district court challenging a rejection that has been affirmed by the PTO Board and can, in the action, (1) freely introduce new evidence, including declarations and testimony, and (2) obtain a “de novo” decision fact issues pertaining to patentability.  Importantly, when an applicant does introduce new evidence, a court in a Section 145 civil action need not give deference to the PTO’s fact finding on patentability.

Also of interest in Hyatt is the underlying story, which is discussed below.  The facts of the case reveal an amazing and ominous possibility.  The possibility is that the applicant Hyatt could obtain a patent, which would have a term of 17 years measured from the issue date (which would be after 2012), but with an effective filing date of 1995 (or 1984 or 1975).  The patent might have broad claims drafted to cover products now (2012) being widely marketed in the computer and electronics industries.  However, as will be seen, neither the Supreme Court nor the lower courts (Federal Circuit and district court) have actually ruled on the merits.  Thus, it could well be that the lower courts will in due course uphold the PTO’s rejections of Hyatt’s numerous “new” claims as lacking written description support under 35 U.S.C. Section 112. Read CPLRG™ 0080

CPLRG™ 0079 - Mayo Collaborative Services v. Prometheus Laboratories, Inc. - Mar. 20, 2012

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) (Breyer, J. for unanimous Court).  For the slip opinion, click here: Mayo03202012.USSC

SUMMARY:  CLAIM TO “LAW OF NATURE”; PROCESS STEPS NOT SUFFICIENT TO TRANSFORM CLAIM INTO A PATENT-ELIGIBLE APPLICATION OF A LAW OF NATURE; WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL STEPS PREVIOUSLY USED BY RESEARCHERS IN FIELD; CLAIM TYING UP USE OF UNDERLYING NATURAL LAW AND INHIBITING ITS USE FOR FURTHER DISCOVERY. A patent concerned thiopurine drugs, which are used to treat immune-mediated gastrointestinal disorders. When a thiopurine drug is administered to a patient with the disorder, the patient develops metabolites, including G-TG and 6-MMP. The patent reports the named inventors’ discovery of precise correlations between the level of the metabolites in the patient’s blood and the drug’s efficacy and toxicity. The correlations are useful to physicians for adjusting the drug dosage up or down for a particular patient. The claim at issue recites two steps: (1) administering the drug to a patient with an immune-mediated gastrointestinal disorder and (2) determining the level of the 6-TG metabolite, together with two “wherein” clauses, which recite that a concentration below one specified level (230 pmol) “indicate[s] a need to increase” drug dosage and a concentration above another level (400 pmol) indicates a need to decrease the dosage. A district court held the claim invalid as a “law of nature. The Federal Circuit reversed. HELD: the Federal Circuit erred. The claim is invalid as drawn to a “law of nature,” that is, the relationship between metabolite concentration in blood and thiopurine drug efficacy and toxicity. The recited steps of administering the drug, determining the metabolite level together with the “wherein” indications of a need for dosage adjustment, do not transform the claim into a patent-eligible application of a law of nature because (1) “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,” and (2) “upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.”

COMMENTARY.  For a critical commentary on Mayo, see below. Read CPLRG™ 0079

CPLRG™ 0078 - American Invents Act No.3 - Dec. 4, 2011

AIA Analysis: Section-by-Section Review of America Invents Act with Cross-References

The American Invents Act contains 37 sections.  The sections vary greatly in relative length, importance and generality.  For example, Section 3 makes a fundamental change in the priority principle by substituting a “first inventor to file” principle for the historic “first to invent” principle.  In contrast, Section 24 names the new Detroit satellite office of the Patent and Trademark Office.

The substantive amendments to the patent statutes  made by the AIA are best understood against the background of existing law.  Attached is a draft section on the AIA, organized section-by-section.  For each section, it analyzes the changes in the Patent Act made by the AIA and their impact, together with cross references to discussions of the affected subject area in the Chisum on Patents treatise.  The AIA Analysis is here:  AIAOverview

CPLRG™ 0077 - America Invents Act No. 2 - Sep. 16, 2011

What the Reform Act Does NOT Reform

Perhaps the first and most important feature of the 2011 patent “reform” legislation is what it does not reform.

The changes made by the AIA are significant and numerous, but they change little of the substantive law on patentability and infringement.

For example, essentially unaltered are:
(1) the standards of novelty and unobviousness in relation to the prior art (though the Act will, prospectively, alter the definition of prior art),
(2) the enablement and written description requirements,
(3) patent eligible subject matter,
(4) claim interpretation,
(5) the doctrine of equivalents and prosecution history estoppel,
(6) remedies for infringement, and
(7) direct and indirect infringement (active inducement and contributory infringement).

These important matters will continue to be defined by the constant flow of case law.

The switch to first-to-file priority is significant, but it goes into effect only for applications filed 18 months after enactment.  Many, many applications and patents will be governed by the “old” law.  Alas, many of us may expire before the first-to-invent principle does (fully).   Also, standards for proving invention (conception, reduction-to-practice, etc.) will continue to be relevant to determine issues such as co-inventorship and ownership.

Also, the grace period includes an inventor disclosure rule that will, arguably, allow an inventor to set a priority date by a “public disclosure” of the invention (up to a year before filing), which eliminates from the prior art a subsequent, pre-filing independent disclosure by another.  The Act does not define what constitutes a public disclosure for this purpose.

Never has so much attention been focused on a patent enactment that accomplished so little.

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