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King & Spalding: Intellectual Property Newsletter - December 2012

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Trending ..... Myriad: SCOTUS Rules on Gene Patentability ..... Patent Trolls Feel the Heat ..... Bowman v. Monsanto: SCOTUS on Self-Replicating Technologies (eg Seeds) ..... CLS Bank Intl v Alice Corp: Federal Circuit Attempts to Delineate Abstractness ..... ReDigi: First sale Doctrine Inapplicable to Digital Music Re-Sales ..... Aereo Sees Off Copyright Injunction ..... Myriad Oral Arguments ..... Exelixis: PTO Undercalculates Patent Term Adjustment ..... A European Patent? Patent Court? ..... The America Invents Act

Intellectual Property Newsletter - December 2012

King & Spalding
December 27, 2012
12 pages

In this Issue:

News From the Bench

Clarification of the “Vitiation Test” when applying the Doctrine of Equivalents
The “Success More Likely Than Not” and “Ordinary Observer” Standards for a Preliminary Injunction in design patent infringement
eBay Revisited - A Normal Expectation of Injunction
Fed Circuit invalidates Intema patent under §101, but its reasoning highlights an inconsistency with the Supreme Court’s Prometheus decision
Apparently Obvious, But Not: When Secondary Considerations Become Primary
Hatch-Waxman’s Safe Harbor provision is not limited to Pre-approval Activity

PATENT Notes In This Issue: U.S. Patent Practice

When can Reissue be used to Cure Misconduct in Obtaining a Patent

Clean-Tech Bulletin

News from the Biofuels Front: Hard Lessons in Patent Drafting

Patent Litigation News

Wilson Sonsini: Patent Trial and Appeal Board Issues First Final Written Decision Under America Invents Act Proceeding

June 18, 2013 AIA: Litigation Practice

Troutman Sanders: Supreme Court Rules Human Genes Unpatentable

June 18, 2013 Association for Molecular Pathology v. Myriad Genetics: SCOTUS Holds Isolated Genes Not Patentable

Vinson & Elkins: U.S. Supreme Court: Isolated DNA Is a Patent-Ineligible “Product of Nature”

June 18, 2013 Association for Molecular Pathology v. Myriad Genetics: SCOTUS Holds Isolated Genes Not Patentable

Bard Peripheral Vascular v W.L. Gore: Federal Circuit Leaves "Willful Infringement" Call to Judges

Baker Hostetler: Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc.

Nixon Peabody: Federal Circuit holds the objective prong of the willful infringement analysis is a question of law to be reviewed de novo [Bard Peripheral Vascular, Inc., v. W.L. Gore]

Bracewell & Giuliani: Federal Circuit Passes Torch From Juries to Judges for Willful Infringement Determinations

In re Baxter: Federal Circuit Upholds USPTO Ruling on Invalidity

Venable: Blessing or Curse: In re Baxter International Makes Reexamination More Appealing to Patent Challengers

Patton Boggs: Federal Circuit Affirms Patent and Trademark Office’s Denial of Patentability Despite Federal Circuit’s Prior Holding of Validity [In re Baxter]

Vinson & Elkins: The Federal Circuit Affirms Invalidity on Claims that it Previously Held Were Not Proved Invalid [In re Baxter International, Inc]

CLS Bank Intl v Alice Corp: Federal Circuit Attempts to Delineate Abstractness

Pillsbury: Federal Circuit’s Split Decision on Software Patents in CLS Bank Satisfied No One and Confused All

Jones Day: CLS Bank: Is This the "Death of Hundreds of Thousands of Patents"?

Faegre Baker Daniels: The Curious Case of CLS Bank v. Alice Corporation

WildTangent Inc. v. Ultramercial LLC: SCOTUS Requests Federal Circuit View on Patentability of Software Patents

Patton Boggs: Supreme Court Orders Review of Patentability for Software Patents [WildTangent Inc. v. Ultramercial LLC]

Akerman: Has Patenting Industrial Processes Now Become a Promethean Task? [Ultramercial, LLC v. Hulu, LLC]

Vinson & Elkins: U.S. Supreme Court Asks Federal Circuit to Reconsider Another Ruling on Patentable Subject Matter [Wild Tangent v. Ultramercial]

Rates Technology v Speakeasy: Second Circuit Holds "No-Challenge" Clause Unenforceable Pre-litigation

Weil: Supreme Court Denies Certiorari Petition in Appeal of Second Circuit Case Holding Patent “No Challenge” Clause Unenforceable

Sidley Austin: No-Challenge Clauses in Patent Licenses: a Practical View [Rates Technology Inc. v. Speakeasy, Inc.]

Orrick: U.S. Court of Appeals Holds No-Challenge Clause in Agreement Settling Patent Infringement Allegation Prior to Litigation Void for Public Policy Reasons

In re EMC Corp: Federal Circuit Limits Joinder in Pre-AIA Suits

Milbank: Federal Circuit Limits Joinder in Pre-AIA Lawsuit [In re EMC Corp]

White & Case: In Re EMC: Federal Circuit Limits Joinder to Pre-AIA Cases

Morrison Foerster: Say Goodbye to Your Co-Defendants: Federal Circuit Imposes New Requirements for Joinder in Pre-AIA Cases

In re MSTG: Settlement Negotiations Not Privileged

Baker Botts: Discoverability Of Settlement Negotiations [In re MSTG]

ReedSmith: Your Settlement Negotiations May Not Be Privileged [In re MSTG, Inc.]

Crowell & Moring: Federal Circuit Holds That Settlement Negotiations Are Not Privileged [In re MSTG, Inc]

Aventis v Hospira: Material Non-disclosure Constitutes Inequitable Conduct

Kramer Levin: Intentionally Withholding Important Information from the USPTO Still Has Serious Consequences [Aventis]

Andrews Kurth: Federal Circuit Affirms Pre-Therasense Finding of Inequitable Conduct [Aventis Pharma S.A. vs. Hospira Inc.]

Patton Boggs: Federal Circuit Affirms Inequitable Conduct Judgment for Non-disclosure of Material References

Prometheus Labs: SCOTUS Examines Patent-eligible Subject Matter in Medical Treatment Claims Context

Paul Hastings: Prometheus – a new dawn for biotech patents

Nixon Peabody: The developing legacy of Prometheus: new interim guidelines for patent eligible subject matter

Paul Weiss: Supreme Court Affirms Reach of Rule Limiting Patents on Laws of Nature

Marine Polymer: Federal Circuit Limits Intervening Rights

Patton Boggs: The Intervening Rights Defense Applies Only Where Claim Language was Actually Changed During a Reexamination

Bracewell & Giuliani: 'Round the Turn They're A-Comin'! The Wild Patent Enforcement Ride of Marine Polymer v. HemCon

Venable: Federal Circuit Clarifies the Scope of Intervening Rights

In re Staats & Continuing Patent Applications

Baker Botts: Revitalizing A Dead Patent Family With Continuing Reissue Patents: In Re Staats

K&L Gates: The Federal Circuit Affirms the Use of Continuing Patent Applications to Extend the Statutory Broadening Reissue Period beyond Two Years [In re Erik P. Staats and Robin D. Lash]

Thompson Hine: Federal Circuit Rules on Broadening Reissuance of Patent Claims [In re Staats]

Microsoft v. i4i LP & Patent Invalidity Standard of Proof

Holland & Knight: U.S. Supreme Court Affirms "Clear and Convincing" Evidentiary Standard of Proof for Invalidity, Suggests Ways to Address Presumption of Validity

Jones Day: Microsoft v. i4i: The Supreme Court Affirms that Validity Challenges Must Be Proved by Clear and Convincing Evidence

Fish & Richardson: Supreme Court: It Still Has To Be “Clear and Convincing”

Global-Tech Appliances v. SEB: "Willful Blindness" Is Sufficient for Inducement of Patent

Wiley Rein: Seeking Clarity With 'Willful Blindness'

Mintz Levin: U.S. Supreme Court Holds "Willful Blindness" Is Sufficient for Inducement of Patent

Alston + Bird: The Supreme Court Raises the Standard for Induced Patent Infringement to Require Knowledge of Infringement or “Willful Blindness”

Stanford v Roche & University Ownership of Federally Funded Patents

Baker Botts: Does Your Employment Agreement Contain A Time Bomb? 5 Minutes That Can Save A Lawsuit

Greenberg Traurig: U.S. Supreme Court: Bayh-Dole Act Does Not Supersede Inventors' Rights in Federally Funded Inventions

K&L Gates: Bayh-Dole Act Turned On Its Head?

Uniloc v Microsoft: Federal Circuit Gives 25% Rule the Thumbs Down

Latham & Watkins: An End to the Rule of Thumb: Uniloc USA, Inc. v. Microsoft Corp.

Greenberg Traurig: Federal Circuit Kills 25 Percent Rule

Bingham: Patent Damages Case Affects Litigants and Dealmakers

Unique Products: False Marking Statute Violates Constitution's Article II "Take Care" Clause

Day Pitney: District Court Finds Qui Tam Provision of Patent Marking Statute Unconstitutional

Mayer Brown: False Marking Statute Ruled Unconstitutional by Ohio District Court

Morgan Lewis: False Marking Statute’s Qui Tam Provision Ruled Unconstitutional

Bilski-Patentability of Business Methods

Baker Botts: Patentable Subject Matter Post-Bilski

Orrick: U.S. Supreme Court's Bilski Ruling Is Welcome News for Asian Clean Energy Innovators

Ashurst: Business methods patentable in the US in Bilski, but UK courts remain restrictive

Astra Zeneca v Apotex: Skinny Labeling No Panacea For Inducement of Patent Infringement

Cravath: Induced Infringement Based on Filing an ANDA: It’s All in the Label

Fish & Richardson: Skinny Labeling and the Inducement of Patent Infringement [Astra Zeneca LP v. Apotex Inc]

K&L Gates: Skinny Labeling in Question — Federal Circuit Affirms Preliminary Injunction for Inducing Infringement of Orange Book Method of Use Patent Despite Section viii Labeling Carve-Out

Centillion & Divided Patent Infingement of System Claims

Foley & Lardner: A Look Behind the Federal Circuit’s Recent Clarification of the Legal Standard For Infringing Use of System Claims in Centillion

Pillsbury: New Federal Circuit Decision Rules on Divided Patent Infringement of System Claims [Centillion Data Sys., LLC v. Qwest Comm]

Edwards Angell: Effective Remedy for End User's Infringing "Use" of Patented System Remains Elusive [Centillion Data v. Qwest]

Princo & Patent Pools

Jenner & Block: The Patent Misuse Defense After Princo

Willkie Farr & Gallagher: En Banc Federal Circuit Decision Clarifies Permissible Conduct By Patent Pools and Other Joint Ventures Under The Patent Misuse Doctrine

Weil: Princo Corp. v. International Trade Commission and U.S. Philips Corp.

Therasense v Becton & Inequitable Conduct

Ballard Spahr: Rule 56 After Therasense—Are We Bound for Change?

Haynes and Boone: The U.S. Patent and Trademark Office Proposes Changes to the Duty of Disclosure to Match the Therasense Standard

Orrick: Federal Circuit Tightens Standards for Establishing Inequitable Conduct in En Blanc Ruling

Association for Molecular Pathology v. Myriad Genetics: SCOTUS Holds Isolated Genes Not Patentable

Troutman Sanders: Supreme Court Rules Human Genes Unpatentable

Vinson & Elkins: U.S. Supreme Court: Isolated DNA Is a Patent-Ineligible “Product of Nature”

Orrick: Myriad: The Court Has Spoken - Isolated DNA is NOT Patent-Eligible Subject Matter

Ariad Pharms: Federal Circuit Upholds Separate Written Description Requirement

Patton Boggs: New Patent Fees Finalized

Dorsey & Whitney: Federal Circuit Reaffirms Existence of a Separate Written Description Requirement

Quarles & Brady: Substantive Advice for Research Institutions to Comply With The Written Description Requirement