The Supreme Court on May 20, 2013, agreed to review a Federal Circuit decision that a patent licensee bears the burden of proof in its action for a declaratory judgment of noninfringement where the license remains in effect to preclude the defendant patentee’s infringement counterclaim. Medtronic Inc. v. Boston Scientific Corp., U.S., No. 12-1128, 5/20/2013.
The question presented in the petition for certiorari is as follows:
In Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), this Court ruled that a patent licensee that believes that its products do not infringe the patent and accordingly are not subject to royalty payments is “not required … to break or terminate its … license agreement before seeking a declaratory judgment in federal court that the underlying patent is … not infringed.”
The question presented is whether, in such a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.
On Tuesday, May 21, 2013, Jeffery Lewis, who is the President of the American Intellectual Property Law Association (AIPLA), sent a letter to Sylvia Matthews Burwell, who is the Director of the Office of Management and Budget (OMB). In this letter Lewis, speaking on behalf of the AIPLA and its 15,000 members, challenged the legal interpretation of the budget cuts the Obama Administration says are required of the USPTO thanks to sequestration.
In the letter Lewis points out that the USPTO is at a critical point in the implementation of the America Invents Act (AIA), and this significant reduction in USPTO funding is based on an erroneous legal interpretation. Lewis also points out that the cut in funding to the USPTO is contrary to the promises made at the time the AIA was passed.
Those of us who followed the AIA debate and passage knew that it would only be a matter of time before the government reneged on its assurances that the USPTO would be allowed to keep 100% of the fees it collected. Senator Tom Coburn (R-OK) championed an amendment that ultimately failed, which would put into the Statute the requirement that 100% of fees collected be allowed to be used by the USPTO. That was rejected by Republican House leaders, who in turn promised in a letter that they would still provide 100% funding. A promise in a letter is, of course, worthless in Washington, DC.
The House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet on March 14, 2013, heard from six witnesses that the business of “patent assertion entities” (PAEs) is inflicting severe harm on a broad range of technology users.
That business involves the enforcement of weak or invalid patent claims against initial and downstream users of devices that are remotely related to the patent claims for the sole purpose of extracting settlements in amounts much lower than the cost of litigating the rights. The witnesses at the hearing agreed that, when confronted PAE demand letters on frivolous claims, settlements by and large are economically unavoidable.
Committee Members Are Cautious
The Subcommittee had before it a particular bill (H.R. 845; the Shield Act) to create a limited loser-pays system. It would award full costs to the prevailing party unless the plaintiff is (1) the inventor, (2) the original assignee, (3) one who produced or sold items covered by the patent, or (4) a university or technology transfer organization.
Teresa Rea, soon to be Acting Director of the USPTO. Taken January 17, 2012.
Arlington, Virginia –On Saturday, February 2, during the AIPLA 2013 Mid-Winter Institute, in Tampa, FL, AIPLA will gather Heads of IP Offices from key countries around the world to provide perspective and advice on how to best utilize their IP systems when competing in the modern global economy.
The Heads of IP Offices in Brazil, Hong Kong, and Mexico will give their perspectives on:
(1) the current challenges their offices face;
(2) the role their office plays in the state of business and the economy of their country;
(3) how IP affects the economy in their country, both domestically and in the global economy; and
(4) how this affects US companies doing business in their country.
AIPLA is privileged to feature The Honorable Teresa Stanek Rea, in her first public presentation as Acting Director of the United States Patent and Trademark Office.
On October 11, 2012, I had the opportunity to speak with Bill Barber and Jeff Lewis, who are respectively the soon to be outgoing and soon to be incoming Presidents of the American Intellectual Property Law Association (AIPLA). The interview was done in connection with my fall series profiling the AIPLA, AIPLA Executive Director Todd Dickinson and the AIPLA Annual Meeting. For all of the related articles please see AIPLA on IPWatchdog.
In Part I of the interview I spoke with Barber and Lewis about the AIPLA generally and how it manages to specifically accomplish its mission, which seems to be to voice an opinion of the membership on virtually every intellectual property issue both domestic and foreign. In Part II, which is the finale, we start off talking about the assault on intellectual property rights, particularly the erosion of patent rights.
QUINN: Well, let me ask you guys this since you guys are in the thick of these things and see what’s crossing over the AIPLA desk so to speak. It seems that what is going on across the board is an assault on intellectual property rights over and over and over again in multiple different forms, with respect to multiple different technologies, whether it be copyrights online, or whether it be with respect to patents. With patents I characterize it as the eroding value of a patent, particularly given that you’re not entitled to a permanent injunction and they’re getting harder and harder to get thanks to obviousness being tightened up. Do you see any movement at all in a pro IP owner area?
The American Intellectual Property Law Association is run day-to-day by Q. Todd Dickinson, the former USPTO Director who if you listen to rumors is on this short list or that short list for an appointment to the USPTO or the CAFC. But the AIPLA is not just Todd Dickinson and his extremely capable Executive Team and Staff. So much of the heavy lifting is done by dedicated attorney volunteers who serve on Committees, each with a different focus. The AIPLA is also made up of a Board of Directors that is very hands on, informed about virtually everything and provides what seems to be nearly constant guidance to the organization on issues ranging from positions to take in amicus briefs, to the organization stance on patent reform and PTO rules, to any number of international issues. The amount of work the AIPLA does boggles the mind.
The AIPLA, like State Bar Associations, also has a President. You will read that the AIPLA has 25 full-time employees, but truthfully that number seems like it should be 26. The AIPLA President, as far as I can tell, works every bit as hard and long as anyone else, but simply isn’t paid. The President also attempts to the greatest extent possible to also find time to do real legal work for clients in between rushing to this meeting, taking that call, dealing with whatever issue or flying off to some exotic land to represent the AIPLA abroad.
The AIPLA President serves what appears to be a 1 year term, but that is just the year as President. There is really a 5 year commitment, over which time more and more responsibility is placed on the person who will eventually wear the mantle of President for that year. Then upon leaving the Presidency that person becomes immediate Past President, which means the obligation to the organization agreed to long ago is not yet complete.
Just ahead of the 2012 AIPLA Annual Meeting I had an opportunity to go on the record with Bill Barber(of Pirkey Barber PLLC) then President and now Immediate Past President of AIPLA. Also joining the discussion was Jeff Lewis (of Patterson Belknap Webb & Tyler LLP), who was then President-elect and is now President of AIPLA. In part 1 of this 2 part interview we talk about the organization and how it operates, as well as the time commitment they invest. We also discuss getting “buy-in” from their law partners and their families.
At the conclusion of my day at the AIPLA I sat down for an on the record conversation with Q. Todd Dickinson, the current Executive Director of the AIPLA and former USPTO Director. In Part 1 of the interview we discussed how it is possible for the AIPLA to stay on top of the numerous, never-ending issues that present themselves in the Courts and at the USPTO.
In this final installment of my interview with Dickinson we discuss the Federal Circuit, including the rumors that I have heard about him possibly being on a short list for a future appointment to the Federal Circuit. As you will see, Dickinson deflected those rumors, although acknowledging they are flattering. We then move on to talk about judicial appointments in general, as well as the next big issue that will face the Federal Circuit in the coming years.
Without further ado, here is the conclusion of my interview with Todd Dickinson.
As a part of this all-access look behind the scenes I interviewed Q. Todd Dickinson, the AIPLA Executive Director who is also a former Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office. This interview took place at the conclusion of our day together.
In this segment of my two-part interview with Todd Dickinson we start by discussing how the AIPLA manages the daunting task of taking positions in virtually every IP issue that arises. We then transition into discussing first-to-file and the American Invents Act.
Without further ado, here is Part 1 of my exclusive interview with Todd Dickinson.
The scene at a AIPLA staff meeting on September 6, 2012.
On September 6, 2012, I spent the day at the offices of the American Intellectual Property Law Association. The premise of my visit was to get a behind the scenes look at the inner workings of the AIPLA. In order to obtain this insider’s perspective I suggested that I follow Todd Dickinson around for a day. Dickinson is the current Executive Director of the AIPLA and a former Director of the United States Patent and Trademark Office.
Dickinson and the staff at the AIPLA agreed with my request and a day where Dickinson would have both internal and public meetings was scheduled, or actually re-scheduled. This profile on the AIPLA was pitched much earlier in the year and I had hoped it could coincide with Dickinson being inducted into the IP Hall of Fame. Unfortunately, personal matters got in the way, followed by my busy travel season for the PLI patent bar review course.
Eventually, we settled on September 6, 2012. This would be the day of the USPTO roundtable in Alexandria, Virginia, held for the purpose of discussing the proposed rules relative to implementation of the first to file changes to patent law that will go effective on March 16, 2013.
I really didn’t have any preconceived notions about what I would experience at the AIPLA. I know what the organization is, I know what they do, and over the years I have come to know Todd Dickinson, bumping into him at virtually every major industry event I attend. While I don’t want to ruin the story by jumping to the conclusion, I can say I was thoroughly impressed by what I saw. The shear magnitude of the work that is done by the AIPLA staff and the many dedicated attorney volunteers is staggering.
Founded in 1897, AIPLA is a national bar association of over 14,000 members in private and corporate practice, in government service, and in the academic community involved directly or indirectly in the practice of patent, trademark, copyright, trade secret, and unfair competition law, as well as other fields of law affecting intellectual property. As AIPLA President, Mr. Lewis will be responsible for representing U.S. intellectual property interests throughout the world and guiding AIPLA’s domestic intellectual property policy.
“I am honored to have been elected President of an outstanding organization that plays a pivotal role in the global IP landscape,” Mr. Lewis said. “The coming year promises to be one of continuing change as the evolving global economy and ongoing advances in technology raise new challenges for the IP industry. I am excited to have the opportunity to work with AIPLA and its membership to address these issues and help to ensure that our intellectual property system remains strong and serves the best interests of its participants.”
AIPLA is proud to announce that Executive Director Q. Todd Dickinson will be inducted into the IP Hall of Fame for 2012.
The IP Hall of Fame was created in 2006 by Intellectual Asset Management magazine to identify and honor individuals who have helped to establish intellectual property as one of the key business assets of the 21st century.
“We are thrilled that Todd will receive this recognition,” said William G. Barber, AIPLA President. “Todd has been a great leader at AIPLA since he took over in 2008, and it is wonderful to see his long-time contributions to our industry recognized.”
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