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Industry Insiders Reflect on Biggest Moments in IP for 2012


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: December 27, 2012 @ 9:15 am

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It is that time of the year when reflections are made on the year that is about to pass, wishes are made for the new year, and a prediction or two start to pop from both amateur and professional prognosticators alike. In years past we have done a Patent Wishes article, which is currently in the works. This year I thought I would add an article that gave some industry insiders an opportunity to reflect upon the biggest moments in intellectual property for 2012.

Whenever I do something like this I keep my fingers crossed. The biggest moments in IP seem rather obvious to me, so will they to others? Will I wind up printing the same thing 5 or 6 times? The answer: Absolutely not! We had a very busy year, from Supreme Court decisions to failed legislation to fight piracy on the Internet, to important Federal Circuit cases and implementation of the America Invents Act.

Indeed, for this inaugural edition of Biggest Moments in IP we have a variety of reflections on a wide array of IP issues. Former Commissioner for Patents Bob Stoll walked through some of the biggest items on the patent docket for the year. Stephen Kunin of Oblon Spivak gives us his Top 10 list in David Letterman style. Former staffer to Senator Leahy (D-VT) and current lobbyist Marla Grossman reflects on Senator Leahy’s decision to refuse the Chairmanship of the Senate Appropriations Committee to stay on as Chair of the Judiciary Committee. IP attorney and frequent feature contributor to IPWatchdog.com Beth Hutchens focuses on several copyright and first amendment issues, and reminds us of the battle that ensued to defeat SOPA.

I hope you enjoy reading this as much as I did putting it together with these esteemed industry professionals.

 


Bob Stoll

Drinker Biddle
Former Commissioner for Patents, USPTO

2012 was a seminal year in patents.  The biggest moment was September 16, 2012 when the new procedures for Inter Partes Review, Post Grant Review for Covered Business Methods and Supplemental Examination came into force.  Whether you like these new procedures or not, they change the way we contest patents in the Office and provide for a new way of curing defects in our own patents.  The large number of Inter Partes Reexaminations filed just before that changeover indicates that our patent community is concerned about operating in the new environment.  But I am confident that the leadership of the USPTO will do their best to implement the new procedures in an effective manner and will be willing to improve the processes as they learn of problems.

Patent law was also the subject of significant judicial shaping during 2012.  Near the end of the year, the Supreme Court granted cert on AMP v. Myriad which calls into question the patentability of isolated genes.  The Supreme Court decision in that case during 2013 is widely expected to further narrow the scope of patent eligible subject matter.  Earlier in the spring of 2012 the Supreme Court had decided Mayo v Prometheus which reviewed the boundary between patent eligible methods and laws of nature.  It is notable that the Court seemed to analyze the patent eligibility issues under 35 USC 101 using obvious standards more appropriate under 35 USC 103.  The CAFC taking CLS Bank v. Alice en banc to assess patent eligibility of computer implemented inventions was an important moment, as was the decision in Akami Technologies v. Limelight where the Court provided for induced infringement without proving that all of the steps were performed by a single entity.

Another important event of 2012 was the President signing into law on December 18, 2012 the Hague Agreement on Industrial Designs and the Patent Law Treaty related to patent application formalities.  I have a special interest in these provisions as I signed them for the United States, acknowledging our intent to ratify them,  at the conclusion of the negotiations back in 1992.  Some things take time!

 

Stephen Kunin
Oblon Spivak The end of any year provides the perfect opportunity to reflect on the significant events of the year.  Humorist Dave Berry has the Washington Post Magazine as the forum for his reflections, whereas we have Gene Quinn’s IP Watchdog blog to express our reflections on the significant events in the IP world.  In the grand style of David Letterman I list my assessment of the biggest moments in 2012 that have had a major impact on our patent law.

10. The Federal Circuit in In re Staats, 671 F.3d 1350 (Fed. Cir. 2012) held that applicants were entitled to continue filing continuing reissue applications with broadened claims after the original two-year period had expired.  Had the Federal Circuit affirmed the decision of the PTO’s Board it would have created a new prosecution laches style basis in patent law to refuse the grant of reissue patents.

9. The Federal Circuit in Aventis Pharma S.A. v. Hospira, 675 F.3d 1324 (Fed. Cir, 2012) concluded that inequitable conduct can be still be found under the heightened standards for materiality and specific intent enunciated in Therasense.  As a note to patent expert witnesses-the inequitable conduct defense is still alive albeit more difficult to prove.

8 The Federal Circuit in Marine Polymer Technologies, Inc. v. Hemcon, Inc., 672 F.3d 1350 (Fed. Cir. 2012) (en banc) concluded that no intervening rights are available unless a patent claim has been amended during reexamination.  Patent owners gave a sigh of relief when this decision issued.

7. Following a Supreme Court decision in Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, 132 S.Ct. 1670 (2012) holding that a generic may force correction of an inaccurate Orange Book use code, the Federal Circuit held that the district court must permit the patent owner to propose specific language to correct the use code.  2012 WL 3064737 (Fed. Cir. July 30, 2012)

6. In Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc., 686 F.3d 1348 (Fed.Cir. 2012) the Federal Circuit held that the Hatch-Waxman safe harbor applied to testing of batches of  a drug as required after FDA approval was reasonably related to the development of information to be reported to the FDA.  This decision further clarifies the scope of the experimental use exception.

5. The Federal Circuit in Akamai Techs., Inc. v. Limelight Networks, Inc,, 692 F.3d 1301 (Fed. Cir. 2012) (en banc), superseding 629 F.3d 1311 (Fed. Cir. 2010) changed the law of divided infringement.  The Court held that Limelight could be held liable for inducing infringement if it knew of the Akamai patent; performed all but one of the claimed method steps; induced others to perform the remaining step and others did perform the final step.

4. The Supreme Court decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) levied a stunning blow to the field of personalized medicine.  The Court held that simply appending conventional steps even where physical matter if transformed was deemed insufficient absent novel and useful structure to make applications of laws of nature, natural phenomena and abstract ideas patentable.

3. The Federal Circuit’s decision to en banc rehear CLS Bank International v. Alice Corp. PTY Ltd., 2012 WL 4784336 (October 9, 2012) will dramatically impact subject matter eligibility determinations for computer implemented inventions directed to processes for practical applications of abstract ideas.  The implication on software implemented processes could be profound.

2. The Supreme Court’s renewed in interest in Association for Molecular Pathology v. Myriad Genetics, Inc., 2012 WL 4508118 (November 30, 2012) may reshape the contours of patent eligible subject matter in the life sciences when it addresses the question of whether human genes are patentable.

1. 2012 was the year for the major implementation of most provisions of the America Invents Act.  Kudos to Director Kappos, Janet Gongola and the members of the PTO staff who labored tirelessly in promulgating the September 16, 2012 effective final rules, implementing new systems and procedures and providing timely guidance on the AIA micro-site.  We appreciate the efforts of the PTO to listen to public input and implement the AIA in a fair and balanced manner.

 

Marla Grossman
American Continental Group

“Holy Smokes, Batman!  Senator Leahy Chooses to Remain Chair of the Senate Judiciary Committee Rather than Chair the Senate Appropriations Committee.”

Perhaps no IP moment in 2012 was as momentous as when Batman aficionado and senior senator of Vermont, Patrick Leahy, announced on December 19 that he would forego the opportunity to Chair the Senate Appropriations Committee to remain Chair of the Senate Judiciary Committee, where he can continue his role as the steward of this nation’s patent and copyright laws.

The Chair of the Senate Judiciary Committee wields tremendous power over copyright, patent and trademark law, and most every intellectual property law passed by Congress over the past few decades bears his mark.   Senator Leahy has served as Chair of the Senate Judiciary Committee since January 2007 and from June 2001 through January 2003.  Under his watchful eye, the innovative and creative industries in the US have flourished.

Senator Leahy was a lead author of the Leahy-Smith America Invents Act, which was signed into law on September 16, 2011.  This consensus legislation to reform the nation’s patent system was the most comprehensive reform to the US patent system in nearly six decades.

The senator, who is a published photographer and has appeared in two Batman movies, has been a leading voice in the enforcement of US intellectual property rights.  He authored the Prioritizing Resources and Organization for Intellectual Property Act to enforce laws against stealing US intellectual property and was also a lead sponsor of the PROTECT IP Act, legislation to help protect American innovators and creators by cracking down on rogue websites dedicated to the sale of infringing or counterfeit goods.  He was a key author of the Digital Millennium Copyright Act, enacted by Congress to protect copyright works while allowing Internet access and online service providers to flourish and has had a hand in every major legislative IP initiative in recent memory – from the Copyright Term Extension Act, the Trademark Law Treaty Implementation Act, the Digital Performance Right in Sound Recordings Act and the Performance Rights Act.

Is it any wonder that the state of Vermont is granted more patents per capita than any other state in the nation?  This small state has left a huge imprint on US patent and copyright laws, and its influence will most certainly continue now that Senator Leahy shocked and delighted the IP community by deciding to continue to Chair of the Senate Judiciary Committee.   Holy smokes, indeed!

 


Beth Hutchens

Hutchens Law
Featured Contributor on IPWatchdog.com

I don’t think anyone would argue that patent law wasn’t huge in 2012.  The Apple/Samsung feud has certainly kept everyone mesmerized for the last several months- and rightfully so.  But the non-patent side of intellectual property saw its fair share of the action.  In fact, there are issues rumbling around in my end of the sandbox that could have more of an impact on our daily lives than the technology in our smart phones.  Here are three of the biggies from this year.

1. The Righthaven Takedown (or Was it a Smackdown)?  This could be the copyright case to end all copyright cases and it has been going on forever.   Righthaven was a copyright holding company that in 2010 started filing lawsuits alleging online copyright infringement.  Lots of them.  While mass copyright infringement suits remain a contentious topic, Righthaven’s tactics went from questionable to downright bizarre.  The company all but tossed modern copyright jurisprudence out the window.  This eventually led to the suits getting thrown out for issues that should have given pause to filing them in the first place– notably lack of standing and fair use.  But the damage had been done and, as of late, Righthaven is in some serious debt thanks to judgments against it, it has lost all of its assets (including the copyrights it was suing over), and is scrambling to find a way to avoid paying up.  The whole thing remains mired in the appeals process and it doesn’t look like the end is anywhere in sight for this hot mess of a case.

2. SOPA PIPA (the Wolves in Sheep’s Clothing).  SOPA (“Stop Online Piracy Act”) and PIPA (“Protect IP Act”) were the first major attempts by Congress to regulate the Internet.  The bills would have given the Justice Department the power to go after foreign websites accused of willfully committing or facilitating IP theft- even if there was only a suspicion of such activity.  The government would have been able to force U.S.-based Internet service providers, credit card companies, and online advertisers to cut off ties with those sites.  This was all under the guise of stopping piracy, so naturally the MPAA and the U.S. Chamber of Commerce were all over it, but the overreaching nature of the bills was terrifying to say the least.  Teh Interwebz fought back and several sites (including Wikipedia, Reddit, WordPress, and Mozilla) went dark for 24 hours in protest.  SOPA and PIPA are now dead but OPEN (“Online Protection and Enforcement of Digital Trade”) and the IAMA (“Internet American Moratorium Act”) have risen from the ashes.  Internet regulation promises to be a recurring nightmare so pay attention to what Congress is getting up to in the coming year.

3. Marco Randazza versus Crystal Cox (First Amendment Attorney Versus “Investigative Blogger”).  We are starting to see more and more lawsuits being brought against bloggers for their online content, which is unfortunate, but this one is special.  In order to profit from her “reputation management services” Ms. Cox bought a cadre of domains featuring Mr. Randazza’s name (such as marcorandazzasucks and other more pejorative terms that need not be repeated here).  The domains all pointed to lengthy screeds that were riddled with nasty, tasteless, and untrue things that give new meaning to the term “Google bomb”.  Not getting the reaction she hoped for Ms. Cox then targeted Randazza’s wife and did the same thing.  Things got real when Cox went after Randazza’s little three-year-old daughter.  A UDRP (“Uniform Domain-Name Resolution Policy”) panel found that while there are big First Amendment protections for online content, cybersquatting and extortion don’t qualify.  The case is now being heard in the District Court of Nevada where the judge just handed down a Temporary Restraining Order that prevents Cox from trafficking in, or registering, any more domains and requires her to fork over the existing ones.  This case has the potential to provide some very good precedent and it promises to be entertaining so get the popcorn ready and stay tuned.

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Posted in: America Invents Act, Authors, Beth Hutchens, Congress, Copyright, Gene Quinn, IP News, IPWatchdog.com Articles, Patents

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

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  1. Even in these days of multiple amicus briefs, it seems appropriate to reflect that opinions of the Supreme Court provide rulings for private disputes, as pointed out by President Lincoln in his first inaugural address, and though influential have inherent limitations. What is binding is any novel rule of law, insofar as it is discernible from the decision and was essential to the determination of the or one of the disputes before the court. Other statements are dicta, and may or may not be followed depending on whether they are mere rhetorical flourishes intended to illuminate the facts or reasoning in the particular dispute before the court or are truly useful in relation to later decisions. And even where there is a rule of law, its true scope will only become clear by later interpretation.

    As has been said in previous postings on this blog, the factual situation in Prometheus could be described as an outlier, the claim that came before the Supreme Court was idiosyncratically drafted, and it is impossible to determine any workable rule from the opinion handed down. The purported rule if given its broadest reasonable interpretation would read onto a number of situations where patentable subject matter has been considered to be available for at least a century. I have on my desk a copy of a final rejection from the USPTO objecting to a structural term (“cup-like”) on the grounds of indefiniteness because it is not clear how similar an element must be to be cup-like and because the metes and bounds would allegedly be undertimable to an ordinary skilled artisan. There is no way of knowing the metes and bounds of any purported rule in Prometheus, and if the opinion is carefully studied it will be seen from the concluding remarks that the court expressly shrank from making any new rule.

    In both the UK and the US which share a common legal tradition there are some decisions of our highest court which have been enduringly influential and there are others which are important only for their own facts, should and do have no enduring effect, and after a few years are forgotten. In the patent field, Graham and Festo are arguably decisions of the first kind and Prometheus is arguably a decision of the second kind. It is submitted that neither the lower courts nor the USPTO should be over-zealous in applying such an imperfectly reasoned and marginal decision as Prometheus.

    With the utmost respect, Bernard, and with reference to Judge Prost’s opinion in in Alice,a direction to apply the law with greater or less rigour is so much garbage. At every level, whether examiner, supervisory examiner, appeal board or CAFC the task of the administrative agency or tribunal is NOT to apply the law with a high, a moderate or a low degree of rigour but to apply the law CORRECTLY according to the evidence and the arguments submitted. To come to judgment on matters to be decided with predetermined prejudices or attitudes is to deny parties due process. Every court in both our countries has a statue of justice. She has scales for weighing evidence and arguments and is blindfold so she does not see anything else and upset the weighing process. Insofar as greater rigour is concerned, that is an invitation to remove the blindfold, and is a potential source of great wrong.

  2. […] Each year over on IPWatchdog.com, I do a series of articles that wrap up the year and lead us into the new year, hopefully feeling optimistic and energized. This year, I decided to reach out to some of the folks I know in the industry and ask for their idea on what the biggest moments were in 2012 for the world of intellectual property. See Biggest Moments in IP for 2012. […]