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Advanced Software Design Corp. v. Federal Reserve Bank of St. Louis - CPLRG™ 0002 - Sep. 30, 2009

Advanced Software Design Corp. v. Federal Reserve Bank of St. Louis, 583 F.3d 1371, CPLRG 0002 (Fed. Cir. 2009) (NEWMAN, Prost & Moore) advancedsoftware09302009

MAJOR ISSUES: United States Government–Use for the Government with its “Authorization or Consent.”

Read CPLRG™ 0002

Already, LLC. v. Nike, Inc. - CPLRG™ 0081 - 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

Alza Corp. v. Andrx Pharmaceuticals, LLC - CPLRG™ 0057 - Apr. 27, 2010

Alza Corp. v. Andrx Pharmaceuticals, LLC, 693 F.3d 935, CPLRG 0057 (Fed. Cir. 2010) (PROST, Dyk & Schall) AlzaAndrx04262010

MAJOR ISSUES: enablement; full scope of claim; claim broadly construed to show infringement not enabled; undue experimentation Read CPLRG™ 0057

America Invents Act No. 2 - CPLRG™ 0077 - 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.

America Invents Act No1 - CPLRG™ 0076 - Sep. 16, 2011

Introduction to AIA

On September 16, 2011, President Obama is scheduled to sign into law the “Leahy-Smith America Invents Act” (hereafter “the Act” or “AIA”).  The Act makes numerous changes to the governing United States patent statutes, which are codified in United States Code Title 35.

The Act is from a bill of the House of Representatives,  112th Cong., H. R. No. 1249.  AmericanInventsActHR1249

Pertinent to the interpretation of the Act is the House Report on the Bill, 112th Cong., H.R. Report 112-98.  HouseReportonAmericanInventsAct

Information on the legislation can be found at a U.S. Patent and Trademark Office (PTO) website here.

A series of Chisum Patent Law Reference Guides will address specific changes, issues, and developments on the AIA.

CPLRG 076:  Introduction to AIA

CPLRG 077: What the Reform Act Does NOT Reform

CPLRG 0078: Section-by-Section Analysis

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