The U.S. Supreme Court gave tech businesses what they wanted — more defense against patent suits. The Court made it easier to get a patent declared invalid for failing to show “real innovation” in development. Technology companies, especially software developers, have been beating a never-ending drumbeat that they are the victims of patent suits, therefore the system must be broken.

In KSR Int’l Co. v. Teleflex Inc. (Opinion 04-1350; Decided April 30, 2007), the Court looked at whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven “‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”

The District Court had granted KSR summary judgment after holding that KSR satisfied the TSM test, reasoning the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals. Reversing, the Federal Circuit ruled the District Court had not applied the TSM test strictly enough, having failed to make findings as to the specific understanding or principle within a skilled artisan’s knowledge that would have motivated one with no knowledge of the invention to attach an electronic control to the support bracket as was the case at hand.

The Supreme Court has now decided that the Federal Circuit addressed the obviousness question in a narrow, rigid manner that is inconsistent with §103 and the Supreme Court’s precedents.

The Court set out the original factors for determining obviousness over 40 years ago in Graham v. John Deere Co., which set out an objective analysis for applying §103: “[T]he scope and content of the prior art are . . . determined; differences between the prior art and the claims at issue are . . . ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”

The Federal Circuit has employed a “teaching, suggestion, or motivation” (TSM) test, under which a patent claim is only proved obvious if the prior art, the problem’s nature, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.

In a suit by Teleflex Inc. that accused KSR International Inc. of using a patented invention for adjustable gas pedals, the Court held that:

(a) When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, §103 likely bars its patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions.

(b) Inventions usually rely upon building blocks long since uncovered, and claimed discoveries almost necessarily will be combinations of what, in some sense, is already known. Helpful insights, however, need not become rigid and mandatory formulas. If it is so applied, the TSM test is incompatible with this Court’s precedents. The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents. In many fields there may be little discussion of obvious techniques or combinations, and market demand, rather than scientific literature, may often drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.

(c) Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed. Second, the appeals court erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem.

It will now be more difficult (read: more expensive than ever) to prosecute and obtain patents and easier to invalidate them. Whether or not this is good or bad depends on which side of the lawsuit you fall. The ruling is a victory for technology companies but a defeat for pharmaceutical and biotech industries as well as many other companies that highly value patent protection, e.g., Procter & Gamble Co., GE, DuPont Co. and Johnson & Johnson.

It is clear that the Supreme Court bought into the public sentiment of late that the patent system is somehow broken and needs a fixin’ or all these tech companies (read: campaign contributors) would not be so upset.

Unfortunately, any way you slice it, the Supreme Court took one amorphous, hard-to-define test and replaced it with another amorphous, hard-to-define test. It remains to be seen how advances with “real innovation” are to be determined.

Posted April 30th, 2007 by Stephen Albainy-Jenei in Current Affairs
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Who Doesn’t Want to Save on Heathcare?

In a week of thumbing noses at patents, Brazil said it will buy a generic version of a Merck’s efavirenz anti-retroviral drug for the treatment of AIDS unless it offers Brazil a deeper discount on the medicine.  Health Minister Jose Gomes Temporao signed a decree declaring a “public interest” medicine” the first step in a process that could lead Brazil to break Merck’s patent.

In November, Brazil began price-reduction negotiations with Merck, demanding the same 65 cents per efavirenz tablet that Merck charges the Thai government.  Brazil at the time was paying $1.59 per pill, the statement said. Merck proposed a 2 percent reduction but was turned down. Currently 75,000 of the 180,000 Brazilians with HIV who receive the free cocktail of anti-AIDS drug, use efavirenz.

Brazil has repeatedly managed to win price reductions in recent years from big pharmaceutical companies by threatening to break patents but has never actually done so.  Earlier, Brazil threatened to break a patent for Kaletra, one of three anti-retrovirals made by Abbott Laboratories Inc.

The motivation is clear. Brazil would save $30 million this year alone. The question remains, however, should a government be able to invoke a compulsory license to treat an ongoing health problem and not just in the case of a drug being needed to save lives in extreme emergency situations, such as wars and pandemics?

The World Trade Organization’s Doha Declaration on the TRIPS Agreement and Public Health, an amendment to the WTO’s TRIPS agreement on trade-related intellectual property rights, affirms that the TRIPS Agreement should be interpreted and implemented so as to protect public health and promote access to medicines for all.

While the TRIPS agreement of 1994 does not require a public health emergency to be declared, it doesn’t make sense to say any patent can be broken to “protect public health and promote access to medicines for all.” That would apply to every drug. That’s what drugs are for.

Don’t Let “the Man” Take Your Phone

In a related measure, Vonage is ticked off that Verizon is asserting its patents regarding Voice over Internet Protocol, or VoIP, service.

Verizon had filed a lawsuit charging that Vonage infringed on seven of its patents related to VoIP in a U.S. District Court in Virginia. It alleged that Vonage infringed on patents held by Verizon that describe technology for completing phone calls between VoIP users and people using phones on the traditional public switched network, authenticating VoIP callers, validating VoIP callers’ accounts, fraud protection, providing enhanced features, using Wi-Fi handsets with VoIP services and monitoring VoIP caller usage.

After a jury found that Vonage infringed three Verizon patents and must pay $58 million in damages (much less than the $197 million they asked for) plus royalties to Verizon, the district court ruled that the VoIP technology Vonage was using infringed on three patents awarded to Verizon and ordered an injunction. While the jury found that Vonage must pay a 5.5% royalty rate on future sales to use the Verizon technology, Verizon asked for a permanent injunction to stop Vonage from using the technology altogether.

The U.S. Court of Appeals for the Federal Circuit has now issued a permanent stay of the injunction. Had the injunction held, Vonage would have been enjoined from using certain VoIP technology to add new customers.The court order granting the stay also set the schedule for appeal. Vonage has to present its opening brief May 9, Verizon, May 23, and then Vonage can reply May 30. Oral arguments are slated to be heard June 25.

Vonage is now taking its fight directly to the consumer by launching Free to Compete, a web site that compares Verizon’s patents to patenting oranges. In addition to the website, it will also place full-page ads in papers around the country as well as through radio and television.

In a sign that settlement talks are probably not going well, the site proclaims that “Verizon® has pursued litigation against Vonage™ in an effort to achieve in court what it cannot achieve in the marketplace.”  Framing the argument as a threat against every U.S. consumer in limiting a choice of phone service, Vonage says that this is why Vonage is fighting “The Man“.

Besides pointing out that you have to be careful what you say, the Web site gives customers and interested parties information on the court cases, as well as links to public court documents, a petition to protect the consumer’s right to choose phone providers, and an e-mail link to complain to Verizon. Some of the letters are posted on the site, along with videos sent in by the company’s customers.

No word yet as to whether or not Vonage will be dedicating their own patent estate to the public.  

Posted April 27th, 2007 by Stephen Albainy-Jenei in Current Affairs
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Today is World Intellectual Property Day, a day organized by the World Intellectual Property Organization (WIPO) as a way to encourage people to think about intellectual property in everyday life, and about its importance in protecting IP. April 26 was chosen as this was the date on which the Convention Establishing the World Intellectual Property Organization entered into force in 1970.

Specifically, the aims of World IP Day are:

• to raise awareness of how patents, copyright, trademarks and designs impact on daily life;
• to increase understanding of how protecting IP rights helps promote creativity and innovation;
• to celebrate creativity, and the contribution made by creators and innovators to the development of societies across the globe;
• to encourage respect for the IP rights of others.

The theme this year is encouraging creativity. In a message from Director General Kamil Idris, he states, “Encouraging creativity – rewarding the creative, innovative talents on which our world and our future are built – these are the ends which intellectual property serves. This is what drives WIPO’s work. This is what makes World Intellectual Property Day a cause for celebration.”

Among the free give-aways are a nice publication on Understanding Industrial Property and a short video clip on “encouraging creativity and innovation” — even if it doesn’t really tell you much.

Jeremy Phillips of IPKat put together his own special post for World Intellectual Property Day describing the recent break-though in asexual reproductive technology by Disney Biosciences - the first-ever cloning of a cartoon character.

Even George and Laura Bush sent out a special WIPD greeting. 

See more activities here.  Although, not everyone wanted to join in all the reindeer games. 

Posted April 26th, 2007 by Stephen Albainy-Jenei in Current Affairs
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The big news this week was that biotechnology was the hottest sector in venture capital in the first quarter of this year. A report out Monday by the National Venture Capital Association, which published the study together with PricewaterhouseCoopers based on data from Thomson Financial, showed that investors poured $7.1 billion into 778 deals. Overall, life sciences businesses received 36 percent of the total dollars for the quarter.

A whopping $1.5 billion went into 102 biotech deals, the single largest investment in a sector, unseating software as king of the venture pot. Medical device deals set a record of $1.08 billion for 96 deals, a 60 percent increase from the amount of funding in the fourth quarter of 2006. The study highlights the fact that an aging population will bring a resulting increase in interest in both medical devices and and biotech research.

Later Stage investing also jumped in the quarter to the highest dollar level since the fourth quarter of 2000 reflecting the fact that biotech and medical device companies require a substantial amount of capital to get through the regulatory process.

Not everybody saw the quarter as a gold rush. Funding dollars for Seed and Early Stage companies declined 30 percent in Q1 to $1.1 billion in 259 companies, a 26 percent decline in deals. Although, the overall spread showed that Seed/Early Stage companies accounted for 33 percent of the deal volume; Expansion Stage for 35 percent; and Later Stage for 32 percent. The results were also skewed geographically with all of the Midwest receiving $233 million (4.08%) compared to the $2.16 billion (37.73%) going to Silicon Valley alone.

The survey excludes debt, buyouts, recapitalizations, secondary purchases, IPOs, investments in public companies such as PIPES (private investments in public entities), investments for which the proceeds are primarily intended for acquisition such as roll-ups, change of ownership, and other forms of private equity that do not involve cash such as services-in-kind and venture leasing. See the report at MoneyTree Report.

Posted April 25th, 2007 by Stephen Albainy-Jenei in Current Affairs
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In 2001, AstraZeneca filed suit in the US against against several pharmaceutical companies that were seeking permission from the Food and Drug Administration (FDA) to market generic versions of Prilosec, Astra’s gastric acid inhibiting drug, for infringement of a patent directed to a process for making an omeprazole formulation.

Andrx filed counterclaims of non-infringement, invalidity and unenforceability for inequitable conduct during prosecution of the ‘281 patent. Andrx also asserted that the process patent as well as two formulation patents, U.S. Patent Nos. 4,786,505 (the ’505 patent) and 4,853,230 (the ’230 patent), were unenforceable for alleged litigation misconduct by AstraZeneca.

The matter was tried in the U.S. District Court for the Southern District of New York along with the consolidated claims of three other ANDA applicants. In October 2002, the District Court entered an order and an opinion finding that Astra’s ‘505 and ‘230 patents are valid and that the generic versions of Prilosec developed by Andrx infringe those patents. On December 11, 2003, the Federal Circuit Court of Appeals affirmed the lower court’s opinion that Astra’s patents are valid and infringed by the Andrx product. (Omeprazole II).

This appeal involves Phases II and IV of the same litigation. In Re Omeprazole Patent Litigation, United States Court of Appeals for the Federal Circuit, Nos. 04-1562, -1563, -1589.

In May 2004, the District Court ruled that claims 1, 2, 3, 7, 9, 16, and 20-21 of Astra Aktiebolag’s United States Patent No. 6,013,281 (the ’281 patent) were literally infringed, but also ruled that the ‘281 patent was invalid due to prior art and obviousness.. The court dismissed Andrx’s litigation misconduct and other counterclaims and affirmative defences, leaving intact the court’s October 2002 decision finding the ‘230 and ‘505 patents not invalid and infringed by Andrx. The October 2002 decision was affirmed in all respects on appeal in December 2003. The court entered final judgement regarding the ‘281 patent in July 2004. Unlike the patents that claimed a formulation in Phases I and III, the ’281 patent claims only a process.

Omeprazole is the generic name for Prilosec®. Omeprazole inhibits the production of gastric acid when, after absorption, Omeprazole transforms into its active species in the parietal cells (acid-producing cells in the stomach lining) and inhibits acid production. However, omeprazole degrades in acidic and neutral environments. Therefore, it must be protected from contact with gastric juices while traveling to the parietal cells. Thus, an omeprazole formulation needs a protective enteric coating around the core containing the active alkaline reacting compound (ARC) and a separating layer between that core and the coating.

The ’281 patent recites a method for making this pharmaceutical formulation. The pharmaceutical formulation is composed of a core that contains a proton pump inhibitor like omeprazole to decrease gastric acid secretion, a water soluble separating layer, and an enteric coating layer. Specifically, the ’281 patent recites:

The district court found that Andrx literally infringed Astra’s ’281 patent. Omeprazole III, slip op. at 14-18. Indeed, Andrx admitted that its process met all but one portion of claim 1 of the ’281 patent — the portion requiring in situ formation of a separating layer but disagreed with the district court’s construction of “a water soluble salt” in claim 1.

Andrx argued that the district court erred in finding that its product infringes the ’281 patent because it does not have a water soluble separating layer, but instead a layer composed of “almost 50% talc.” According to Andrx, its separating layer with talc is not water soluble, but only disintegrates in water. Andrx claimed that disintegration is not soluble.

The district court found that a Korean patent application anticipated claims 1, 2, 3, 7, 16, and 20-21 of the ’281 patent since the Korean patent application disclosed the exact proportions of the principal ingredients in the ’281 patent’s example 1 and the only ’281 “limitation” missing from the Korean application is the language “thereby forming in situ a separating layer.”

Anticipation requires disclosure of each and every claim limitation in a single prior art reference, either explicitly or inherently and the Korean patent application does not explicitly recite this feature. Therefore, anticipation turns on whether the Korean application inherently disclosed “in situ” formation.

Finding the claim limitation inherent in the earlier disclosure, Judge Rader stated that:

As noted, a prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency. See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Moreover, “[i]nherency is not necessarily coterminous with knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art.” Id.; Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition in the prior art). Though Drs. Lövgren and Lundberg may not have recognized that a characteristic of CKD’s Method A ingredients, disclosed in the CKD Patent Application, resulted in an in situ formation of a separating layer, the in situ formation was inherent.

The record shows formation of the in situ separating layer in the prior art even though that process was not recognized at the time. The new realization alone does not render that necessary prior art patentable. … Thus, the trial court correctly found inherent anticipation.

Judge Newman, concurring in part, dissenting in part stated that”

Anticipation requires that “each element of the claim at issue is found, either expressly described or under the principles of inherency, in a single prior art reference or that the claimed invention was previously known or embodied in a single prior art device or practice.” Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed. Cir. 1983).

The principle of “inherency,” in the law of anticipation, requires that any information missing from the reference would nonetheless be known to be present in the subject matter of the reference, when viewed by persons experienced in the field of the invention. However, “anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation, [or the reference] cannot inherently anticipate the claims.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (emphasis in original); Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001) (”consistent with the law of anticipation, an inherent property must necessarily be present in the invention described by the count, and it must be so recognized by persons of ordinary skill in the art”); In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (that a feature in the prior art reference “could” operate as claimed does not establish inherency).

Posted April 24th, 2007 by Stephen Albainy-Jenei in IP Litigation
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Mylan Laboratories has announced that the U.S. Food and Drug Administration (FDA) has confirmed Mylan’s current status as the only approved ANDA for all strengths of Amlodipine Besylate Tablets.

The decision came to light in a filing on Wednesday with the U.S. District Court for the District of Columbia, which had enjoined the FDA from approving any additional Abbreviated New Drug Applications for amlodipine besylate tablets, 2.5 mg, 5 mg and 10 mg , for a period starting from April 11, 2007 through to at least April 13, 2007. The FDA informed the court that it would be soliciting views of interested parties on this matter by April 4, and that it would render an agency decision on April 11, 2007.

Mylan launched its generic version of Norvasc last month saying it is entitled to 180 days as the sole generic Norvasc seller and has been seeking a temporary restraining order to bar other generic Norvasc approvals during that time. Mylan appealed to the District of Columbia to stop the FDA from immediately approving other applications for amlodipine besylate products. The court ordered FDA to announce its final decision on further Norvasc generic approvals.

The FDA notified Mylan and all amlodipine besylate ANDA applicants that all of the unapproved amlodipine besylate ANDAs are currently blocked from approval by pediatric exclusivity and if the mandate from the March 21 appellate court decision related to the validity of the amlodipine besylate patent does not issue before September 25, 2007, “Pfizer and Mylan will have no additional competition during the interim period and thus will obtain the full benefit that could be derived under pediatric and 180-day marketing exclusivity.”

The FDA stated that in the event an appellate court order is issued prior to September 25, the only ANDA eligible for approval during that period will be from Apotex because of the favorable court decision in the Pfizer case. Mylan will continue to assert that even Apotex should either be blocked by Mylan’s 180-day exclusivity or not be approved during the pediatric exclusivity period based on multiple prior FDA rulings.

Amlodipine besylate tablets are the generic version of Pfizer’s Norvasc tablets, which had U.S. sales of approximately $2.7 billion for the 12-month period ending Dec. 31, 2006, according to IMS Health.

Earlier, in Pfizer v. Mylan Labs (02cv1628), a patent infringement action was brought by Pfizer under U.S. Pat. Nos. 4,572,909 and 4,879,303, which cover an amlodipine besylate product sold under the trade name Norvasc®.

Mylan filed an Abbreviated New Drug Application (“ANDA”) for approval to sell generic amlodipine besylate. Mylan certified pursuant to 21 C.F.R. 314.94(a)(12)(i)(A)(4) (paragraph IV certification) that it was seeking approval to market its generic copy of Norvasc® prior to the expiration of the ’909 and ’303 patents. The application stated that to the best of Mylan’s knowledge neither the ’909 nor the ’303 patents would be infringed by the manufacture, use or sale of the proposed generic amlodipine besylate.

Pfizer sued Mylan for infringement of both patents and sought “[a]n order preliminarily enjoining and permanently enjoining [Mylan] from making, using, selling, offering to sell, or importing into the United States the Mylan Amlodipine Tablets described in ANDA No. 76-418 until after the expiration of the ‘909 patent term, . . ., and after the expiration of the ‘303 patent term . . .”

Mylan argued that Pfizer’s claims for inducing infringement and infringement of the ‘909 patent should be dismissed for lack of subject matter jurisdiction. According to Mylan, since the ‘909 patent expired on July 31, 2006, there is no longer a case or controversy with respect to the ‘909 patent. Pfizer responded that the district court retains jurisdiction over a patent infringement case when the patent has expired but the period of pediatric exclusivity remains at issue. Because the ‘909 patent expired on July 31, 2006, the court found that the rights secured by the patent are no longer protectable and entitlement to injunctive relief becomes moot because such relief is no longer available.

Posted April 23rd, 2007 by Stephen Albainy-Jenei in FDA
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A recent petition for cert addresses the question of what, if any, recourse is available to a patentee against the United States for infringed method claims, where some or all of the method steps are carried out in another country, but the product of that process is imported into the US. In addition, the petition raises the question of whether patents are property subject to the Fifth Amendment Takings Clause. See, Zoltek Corp. v. U.S., Docket No.04-5100o.

The petition, filed on behalf of Zoltek Corp., after the Federal Circuit declined to grant relief for allegedly infringing acts of the Federal government, illustrates a judicial loophole that compromises a patentee’s ability to protect patent rights against the government.

Zoltek, a publicly traded U.S. company, owns the rights to a patent which claims a method for making and processing paper-like sheet products made from carbon fibers. The product produced by the method is useful in military applications such as providing stealth qualities to aircraft. The U.S. contracted with Lockheed Martin Corporation to design and build an F-22 fighter, who in turn, subcontracted portions of the work. The subcontractors used materials made exclusively in Japan, while the product itself (fiberglass mats) was processed in the United States.

The federal government generally enjoys sovereign immunity which can be limited by Congress. For infringement of patents, 28 U.S.C § 1498(a) provides such a limitation, stating that:

whenever an invention described in and covered by a patent of the United States is used. .. by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.
35 U.S.C § 1498(a) (Emphasis added.)

§ 1498(c) limits the scope of § 498(a), providing that the exception “does not apply to any claim arising in a foreign country.”

Zoltek brought suit in the Court of Federal Claims, alleging that the patent, RE34,162, was infringed in violation of 35 USC §1498. The U.S. defended on the grounds that the accused processes were used, in whole or in part, outside the U.S. and thus the claims were excluded from 1498(c) as “claim[s] arising in a foreign country.” The CFC held that 1498(c) barred Zoltek’s claims, but directed Zoltek to allege a taking under the Fifth Amendment.

The Federal Circuit affirmed on slightly different grounds, citing earlier opinions holding that § 271(a) must be satisfied for § 1498 to apply. The Federal Circuit held that the US did not meet 271(a), as “a process cannot be used ‘within’ the United States as required by the [infringement statutes] unless each of the steps is performed within this country.” Because one of the steps of the claimed process—the manufacture of the fibers—occurred outside of the U.S., the Federal Circuit held that there was no infringement under § 271, and §1498 could not apply. As such, the ruling created a “easy-out,” for the US government and its contractors for avoiding infringement of method claims: practice at least one step outside of the United States.

The Federal Circuit further denied the claims asserted under the Fifth Amendment, holding that Zoltek’s only grounds for judicial recourse was 28 U.S.C §1498. The Federal Circuit held that patent rights were not property, but rather, a “creature of patent law” protected only by such relief as the federal government saw fit to grant under 28 U.S.C § 1498(a). According to the Federal Circuit, “property interests… are not created by the Constitution. Rather, they are created and their dimensions are defined by existing rules or understandings that stem from an independent source such as state law,” and to hold otherwise would “read [§1498] out of existence.”

In its petition, Zoltek argues that the Federal Circuit’s opinion strips an entire class of property owners—patent holders—of their Fifth Amendment right to just compensation for the taking of their patent rights, and compromises the incentive to invent methods or processes that could be of import to the U.S. government.

Under the holding of the Federal Circuit, where the U.S. government outsources any one step of a patented process, the patentee no longer has a chance to recover for infringement. This compromises the economic incentive for inventors to provide valuable and useful technologies, making the practice of innovating in this sector a “far riskier endeavor.” (See Zoltek’s petition for cert., p. 15.)

As stated by Judge Plager in his dissent in the Federal Circuit ruling, allowing the government, without liability, to appropriate the products of a patented process merely by performing “any one step” of such process outside the United States “is an invitation to strategic conduct if ever there was one.” Id., citing 442 F.3d 1345, 1383 (Fed. Cir. 2006).

Zoltek further argues that patents should indeed be considered property that is subject to the takings clause of the 5^th Amendment, citing the current Patent Act, which states that “[s]ubject to the provisions of this title, patents shall have the attributes of personal property,” and numerous Supreme Court holding acknowledging the same.

In view of the ease with which the federal government could avoid claims of infringement merely by enlisting foreign sources to practice steps of a claimed method or process, this case is worth watching. The Federal Circuit holding creates an illogical imbalance in the patent law: a patentee could pursue a private company for infringement under 271(g) for these acts, while the federal government and its contractors are immune. Judge Plager’s view — that this holding is an invitation to strategically practice patented processes so as to avoid the necessity of a license — certainly raises the question of whether this holding adequately serves patent policy in encouraging innovation.

For an alternative view on the issue of patents as property subject to the Takings Clause, see Professor Isaacs’s recent note entitled “Not All Property is Created Equal: Why Modern Courts Resist Applying the Takings Clause to Patents, and Why They are Right to Do So.”

Posted April 22nd, 2007 by Nicole Tepe in Current Affairs
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If you or a colleague will be attending BIO 2007 in Boston, we’d like to invite you to join us for a breakfast seminar featuring four of Ohio’s premiere bioscience research institutions. 

The breakfast event, entitled “Partnering with Ohio’s World-Class Research Institutions” is scheduled for Monday, May 7 from 7:45am-9:15am at M.J. O’Connor’s Irish Pub, next to the Boston Park Plaza Hotel.

Tech transfer and commercialization leaders from Ohio State University, University of Cincinnati, Case Western Reserve University, and Ohio University will present a select sampling of available IP and sponsored research opportunities to bio and pharma industry execs.

The event is sponsored by Frost Brown Todd LLC and a full breakfast will be served. Attendance is free, but RSVPs are required as space is limited. To RSVP, call 614.675.3686, x6 or email Matt Schutte at:  mschutte@BioOhio.com

Please join us for a great meal, insightful conversation, and invaluable networking … all before the BIO Convention really gets into full swing.  And when we’re done, a BIO shuttle stop is only a few steps away.

Directions from Mapquest™ here. 

Posted April 16th, 2007 by Stephen Albainy-Jenei in Conferences, Current Affairs
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