All Posts

Salinger v. Colting: Second Circuit Vacates Preliminary Injunction Citing eBay v. MercExchange

Last summer J.D. Salinger sued the author/publisher of the book entitled “60 Years Later Coming Through the Rye” for copyright infringement. Salinger claimed that the book was a sequel to his famous book entitled “Catcher in the Rye” and therefore it was an infringing derivative work. The Second Circuit agreed with the district court that Salinger is likely to ultimately prevail in his lawsuit because the book is probably an infringing work which is not protected by the fair use exception to copyright infringement. However, the Second Circuit remanded because it held that the test used by the district court to decide whether to issue a preliminary injunction was no longer the proper test to use in light of the 2006 Supreme Court decision in eBay v. MercExchange, 547 U.S. 388.

US Trade Representative Issues Annual Report on Global IP Rights

For 2010 the US Trade Representative reviewed 77 trading partners for this year’s Special 301 Report, and placed 41 countries on either the Priority Watch List, Watch List, or the Section 306 monitoring list. The Priority Watch List for 2010 names the following countries:China, Russia, Algeria, Argentina, Canada, Chile, India, Indonesia, Pakistan, Thailand and Venezuela.

Pharma Reverse Patent Payments Are Not An Antitrust Violation

The plaintiffs had argued that defendants had in fact violated Section 1 of the Sherman Act when they settled their dispute concerning the validity of Bayer’s Cipro patent by agreeing to a reverse exclusionary payment settlement. Bayer agreed to pay the generic challengers, and in exchange the generic firms conceded the validity of the Cipro patent. The Second Circuit panel affirmed the granting of summary judgment, finding themselves confined by the previous Second Circuit ruling in Tamoxifen. The panel did, however, make the extraordinary invitation to petition the Second Circuit for rehearing in banc, citing the exceptional importance of the antitrust implications, the fact that the primary authors of the Hatch-Waxman Act have stated reverse payments were never intended under the legislation and the fact that the Second Circuit in Tamoxifen simply got it wrong when they said that subsequent generic entrants could potentially obtain a 180 exclusive period even after the first would-be generic entrant had settled.

Dow Jones Sues Briefing.com Alleging Copyright Infringement

The complaint alleges that in some cases the republication and distribution occurs within a minute or two after the article is published by Dow Jones. In just one two-week period, Briefing.com copied a substantial portion of at least 100 articles and republished more than 70 headlines within three minutes of the initial publication on Dow Jones Newswires. Dow Jones alleges that this conduct violates Dow Jones’ copyrights, amounts to “hot news” misappropriation, violates the DMCA and is otherwise unfair competition.

CAFC: Bad Actor Makes Bad Inequitable Conduct Law

Intent to deceive was admitted, if you can believe that, but as it turns out the prior art withheld, a prior sale, was not invalidating and would not have lead to an appropriate rejection by the Patent Office. Nevertheless, the prior sale of an earlier version of the invention in question was the closest prior art and the Federal Circuit, per Judge Prost, explained that materiality does not require that the the withheld prior art lead to a good rejection. So Judge Prost applied the Patent Office law relative to materiality as it existed prior to the 1992 revision of 37 CFR 1.56.

Patent Reality Check: The Hypocrisy of Duke University on Patents

There are few things in this world that irritate me more than hypocrisy. Did you know that since 1976 Duke University has had 716 issued US patents, 266 of which in some way, shape or form relate to genetics and 156 of which relate in some way, shape or form relate to both genetics AND cancer. While Duke University throws Myriad Genetics under the bus over its patents on the BRCA1 and BRCA2 genes tied to breast and ovarian cancer, Duke has its own patent on identification and sequencing of the BRCA2 cancer susceptibility gene. How convenient!

Federal Circuit to Consider Inequitable Conduct En Banc

The United States Court of Appeals for the Federal Circuit earlier today decided to take up important issues relating to inequitable conduct en banc, vacating the earlier panel decision in Therasence, Inc. v. Becton Dickinson and Co., which issued January 25, 2010. Hopefully the entire Federal Circuit will be able to put to rest the nonsense that has become inequitable conduct, and if the questions presented are any indication we might be in store for a major re-write and settling of the law of inequitable conduct.

Leahy Procedural Move Makes Patent Reform Passage Near

Senate Judiciary Committee Chairman Patrick Leahy (D-VT) recently came to agreement with Committee Ranking Republican Jeff Sessions (R-AL) on changes to the Patent Reform Act of 2009 (S. 515), winning Senator Sessions’ support for passage and making it extremely likely that patent reform will happen this year, and likely very soon. An individual involved in the ongoing patent reform debate…

WIPO Turns 40! Happy World Intellectual Property Day!

How is it possible that a calendar that tells me that January 2 is a bank holiday in the UK, that February 6 is Waitangi Day in New Zealand, that March 13 is Eight Hours Day in Australia, and that July 12 is Battle of the Boyne Day in Northern Ireland, could possibly forget to mention that April 26 is World Intellectual Property Day! After all, World Intellectual Property Day is one of those global holidays celebrated all around the world, right? It is sort of universal, almost like Christmas and New Years Eve, although with substantially less hoopla. But not too much less hoopla this year given that today marks the 10th Anniversary, or birthday if you prefer, of World Intellectual Property Day.

PLI Patent Bar Review New Live Course at Santa Clara May 24-28

PLI is pleased to announce a new live course added to the schedule in conjunction with the Santa Clara University School of Law’s High Tech Law Institute. The Santa Clara course is scheduled for Monday, May 24, 2010 to Friday, May 28, 2010. The PLI Patent Bar Review course is not typically Monday through Friday, and there are always some that say they would prefer a Monday through Friday live course, so if that is your preference here is your chance.

IP Leaders Gather in Boston May 19-21 for LES Spring Meeting

WASHINGTON, April 22, 2010 – Hundreds of intellectual property (IP) business leaders will attend the Licensing Executives Society (USA & Canada) Spring Meeting May 19-21 in Boston. Themed, IP for Entrepreneurs and Universities, the meeting is uniquely designed for entrepreneurs, start-ups, investors, universities, labs and others who wish to learn about successful commercialization of early stage technologies. “We’ve tailored our…

Patent Strategy: Laying the Foundation for Business Success

Patents provide a competitive advantage, and those sophisticated in business know enough to look for and exploit whatever competitive advantage exists. Patents are the 800 pound gorilla of competitive advantage, but realize if you are going to want and need significant sums of money from investors rarely does a single invention or patent command attention. No one wants to invest significant funds into a company that has a one-and-done approach to innovation. You need to understand the road is long. Take a lesson from Apple, Inc. Innovate and then churn your innovation for all its worth, re-purposing the technology, expanding into products and services, constantly push the envelope and milk the golden goose for all its worth!

Inventing Advice: How to Improve Upon a Product

There are always trade-offs in design work. Design features often conflict. For example, a big heavy vehicle is usually safer but the gas mileage is lower. But one of the things I have learned in my years as a product developer is that decisions have consequences. The biggest consequence of making a decision in product development is that the field of all subsequent decisions is contracted. That is, you reduce your list of options. It seems that ideas condense from a gas to a solid. They start out in a nebulous intangible form and condense into a solid physical entity. So bottom line, postpone any decisions on how to do things, initially. Brainstorming is the first order of business.

NEWSFLASH: Duke Researchers Say Patents Block Competition

Last week, on Thursday, April 15, 2010, while many individuals were scrambling at the last minute to file income tax returns in the US, Duke University released a study that, not surprisingly, says patents block competition. WOW! Thank you so much for clearing that up Duke! What would we have ever done without the learned elite at Duke University telling us that patents block competition. Seriously… what was your first clue? For goodness sakes I hope you didn’t take much time or energy coming to that conclusion, given that is exactly what patents are supposed to do. You see, they provide exclusive rights, which means the owner of the right has the ability to exclude. So let’s all breath a sigh of relief that the money spent on an academic study actually reached a conclusion that is true and accurate. Now, if the conclusions drawn from the study were only as commonsensical as the discovery of patents conveying exclusive rights.

Patent Lessons from Monopoly® and the First Millionaire Game Inventor

As a result of his invention Darrow became the first millionaire game inventor, thanks to royalty payments. The irony, however, is that Darrow may not have invented the game at all, but rather he may have taken a locally popular game and made only a few changes. By the time Parker Brothers realized that Darrow may not have been the true inventor the game was already a huge success. In order to protect the game and its investment the decision was made to buy up all patents and copyrights on any related game, thereby ensuring the monopoly on Monopoly®.