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McDermott Will & Emery: IP Update, Vol. 15, No. 12, December 2012

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IP Update, Vol. 15, No. 12, December 2012

McDermott Will & Emery
December 28, 2012

In this Issue:

Patents

Federal Circuit Rules It’s Own Standards Apply When Considering Preliminary Injunctions
Preliminary Testing of Medical Devices in Animals Enables Their Use in Humans
Rare Finding of Non-Obviousness Based Solely on Secondary Considerations
Section 256 Inventorship Claim Does Not Accrue Until the Patent Issues
Infringement of Method Claims Requires Proof of Actual Performance Rather than Mere Capability
Section 102(g) Is Still Available as a Defense for Pre-AIA Patents
Six-Year-Long ITC Investigation Concludes with Finding of Obviousness
Patent Infringement Claims Not Precluded by Related Trademark Infringement Claims in Prior Suit
Reissue Is Not Remedy to Terminal Disclaimer
**WEB ONLY** Diagnostic Claims For Assessing the Risk of Down’s Syndrome Are Not Patent Eligible
Wrong Claim Construction Leads to Erroneous Infringement and Validity Findings
Federal Circuit Mows Down Lower Court’s “Into Engagement with” Claim Construction

Trademarks

40-Year Delay Smacks Down Monetary Damages, but Not Permanent Injunction, in Fraternity and Sorority Trademark Suit Against Paddle Manufacturer

Copyrights

Lack of Striking Similarity Ends The Big C Copyright Infringement Action in the Ninth Circuit
D.C. Circuit Holds Restitution Must Be Based on Loss of Victim, Not Defendant’s Gain

Trade Secrets

Pleading Unjust Enrichment Does Not Support a Claim for the Underlying Trade Secret Misappropriation

Antitrust

Joint DOJ-FTC Workshop Explores Competitive Impact of Patent Assertion Entities
FTC Signals Stricter Stance on Injunctions for FRAND-Encumbered Patents
Walker Process Standing Affirmed for Direct Purchaser Antitrust Plaintiffs

Cert Alert

U.S. Supreme Court to Rule on “Pay-for-Delay” Antitrust Issue

Patent Litigation News

Winston & Strawn: Federal Circuit Finds Software Patents Under Review Invalid Under 35 U.S.C. §101, But Fails to Establish Binding Standard for Subject Matter Eligibility

May 18, 2013 CLS Bank Intl v Alice Corp: Federal Circuit Attempts to Delineate Abstractness

Fish & Richardson: Avoiding Waiver with Thorough Explanation of Anticipated Motion [ChiMei Innolux Corp. v. Semiconductor Energy Lab. Co]

May 18, 2013 Patent Litigation

Mintz Levin: Patent Eligibility of Software Innovations After CLS Bank

May 17, 2013 CLS Bank Intl v Alice Corp: Federal Circuit Attempts to Delineate Abstractness

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

Winston & Strawn: Federal Circuit Finds Software Patents Under Review Invalid Under 35 U.S.C. §101, But Fails to Establish Binding Standard for Subject Matter Eligibility

Mintz Levin: Patent Eligibility of Software Innovations After CLS Bank

White & Case: CLS Bank v. Alice Corp. Further Muddies §101 Patent Eligibility

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

Assoc. for Molecular Pathology v USPTO: In Reversal, Federal Circuit Holds DNA Patentable Subject Matter

Venable: Supreme Debate: Are Human Genes Patentable?

Winston & Strawn: U.S. Supreme Court Holds Oral Arguments on the Patent Eligibility of Isolated DNA Sequences

Bracewell & Giuliani: Batting Practice with DNA Patents at the U.S. Supreme Court

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