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Jessica Chesher

Managing Editor

Innovation eReview
IP Law Watch: Federal Cases

The NYS STLC specializes in technology commercialization research. Tracking cases relevant to technology commercialization and understanding their implications for technology commercialization practice is part of the Center’s mission. Some of the most relevant intellectual property cases are decided by the US Supreme Court and the Court of Appeals for the Federal Circuit (CAFC) interpreting patent, trademark and copyright law issues such as patentability, freedom to operate, infringement, validity, first sale doctrine, patent exhaustion, experimental use and federal jurisdiction. The newsletter covers developments in the evolving legal landscape in which technology is commercialized.

The IP Supreme Court cases from the last term (October 2011 – May 2012) were:  


Mayo Collaborative v. Prometheus, (2011) in which the Supreme Court, citing the Bilski v. Kappos case, refused to uphold a process patent on software relating to the correlations discovered between blood test results and appropriate treatment for disease, finding they are naturally occurring phenomena and therefore, not patentable subject matter.  An article in the blog  SCOTUS (Supreme Court of the United States) by Ronald Mann notes that the Court has established  a very high threshold for the  “value-added” by any invention or process relating to laws of nature, which of course are not patentable.


Therefore, the question to answer about potential patents in the biotechnology area is: how much has the invention added to a law of nature?  This is to insure that it meets the novel, useful and non-obvious test, which the Court found was not met by the Mayo v. Prometheus invention.  See the webcast presented by George McGuire, Esq. of Bond, Schoeneck and King on the NYS STLC Webcast Archives.


Kappos v. Hyatt (2012) is a case about the timing of submitting evidence in support of claims descriptions at the USPTO.   The Court held that aside from those already in the Federal Rules of Evidence and Civil Procedure, there are no limitations on a patent applicant's ability to introduce new evidence in a section 145 proceeding, and that when new evidence is presented on a disputed question of fact, the district court must make new findings that account for both the new evidence and the administrative record before the PTO


Caraco Pharmaceutical v. Novo Nordisk (2012) This is a case concerning the Hatch Waxman Act and generic drug manufacture.


Four IP cases have been accepted by the Supreme Court this term: 


Gunn v. Minton asks the Court to consider how the federal courts patent jurisdiction applies to legal malpractice actions involving patents.  Should state law malpractice claims against trial lawyers for their handling of underlying patent matters be within the exclusive jurisdiction of the federal courts?


Bowman v. Monsanto Co.  addresses patent exhaustion in the context of Monsanto seed patents. This doctrine refers to the fact that once an invention is sold, the seller looses the right to control and prohibit other from using the invention.  Software and seed sales have gotten around this by licensing the use of the products. See more at FindLaw.


Already, LLC v. Nike, Inc. SCOTUSblog states the issue as: Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.


Wiley v. Kirtsaeng   In October this year, the Supreme Court heard arguments from book publishers and content-industry members advocating the Court uphold the Second Circuit decision finding it illegal to import and sell copyrighted works manufactured outside the United States without the copyright owner's permission.  The Second Circuit ruled last year that defendant Kirtsaeng violated John Wiley & Sons' copyrights when he sold cheap foreign editions of the publishers' textbooks in the United States. Kirtsaeng claimed that his sales plan was legal under the first sale doctrine.


Whether the “first sale” doctrine allows the resale of books and other content brought abroad in the US will be determined by the Supreme Court. Notably, three library groups filed amicus briefs asking the Supreme Court to reverse the Second Circuit, noting that upholding the decision could stop libraries from loaning foreign books.   SCOTUS summarizes the case as sorting out the conflict between two sections of the Copyright Act; one which prohibits the importation of a work without the authority of the copyright’s owner, and the other which allows the owner of a lawfully made copy  to sell or otherwise dispose of the copy without the copyright owner’s permission.  Kirtsaeng's argues that Wiley lost its right to control resale of the books once his relatives bought them legally.


When IP cases of note are decided, the NYS STLC offers webcasts by law professors or  attorneys practicing in the area when a new case is issused to provide an overview of the case and its implications.  The NYS STLC web site posts the webcasts for future reference.  Examples include the rejection of the 25% rule (citing Ted Hagelin’s work, p. 38)  in Uniloc USA, Inc. v. Microsoft Corp., a discussion of the Supreme Court case Stanford v. Roach regarding a researcher's assignment of IP rights when working with a company and an academic institution, and the Bilski v. Kappos decision about business method patentability. Bilski found that a claimed process is patent eligible only if it is tied to a particular machine or apparatus, or it transforms a particular article into a different state or thing.


The Center's director, Professor of  Ted Hagelin, is the author of Technology Innovation Law and Practice: Cases and Materials (LexisNexis 2012). This case book compiles eleven chapters regarding areas relevant to technology commercialization.  They are: Technology Innovation Fundamentals; Intellectual Property, Economics, Finance and Business, Licensing Law, Commercializing University Technologies, Industry Employer-Employee Intellectual Property Rights, Experimental Use of New Technology, Bankruptcy, Licensing and Antitrust Law, Tax Effects of Technology Creation and Transfer, US Technology Export Controls, Business Organizations and Management Responsibilities, Financing Technology Innovation. 

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