In the never-ending battle for truth, justice and invalidating methods on natural phenomenon, the U.S. Court of Appeals for the Federal Circuit has once again taken up the burden to review the case of Classen Immunotherapies, Inc. v. Biogen IDEC (06-1634, -1649), after the Supreme Court vacated the CAFC’s earlier decision in view of the Court’s decision in Bilski v. Kappos.

This case, seemingly a do-over of the Metabolite case, involves patents claims directed to methods of selecting vaccine regimens by comparing two regimens and identifying the regimen less likely to cause chronic autoimmune disorders.   The district court held that the claims were invalid as an attempt to patent the idea of a correlation between vaccine schedules and immune mediated disorders (natural phenomenon).

In Classen, the Federal Circuit affirmed the denial of patent-eligibility of a medical treatment method under 35 USC § 101, that is, a question of whether the claimed invention meet the requirements for patentable subject matter.

The entire opinion is as follows:

“In light of our decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), we affirm the district court’s grant of summary judgment that these claims are invalid under 35 U.S.C. § 101. Dr. Classen’s claims are neither “tied to a particular machine or apparatus” nor do they ‘transform[] a particular article into a different state or thing.’ Bilski, 545 F.3d at 954. Therefore we affirm.”

On petition for a writ of certiorari, the Supreme Court vacated and remanded for further consideration in light of Bilski v. KapposClassen Immunotherapies, Inc. v. Biogen IDEC et al. (08-1509).

While the original CAFC opinion was just sixty-eight words, the current revisit brought out three opinions totaling fifty-seven pages, including a concurring opinion  by the Chief Judge Rader, joined by Newman, as well as a dissent by Moore.

In looking at the district court’s application of the common-law exclusions from §101 of “laws of nature, natural phenomena, and abstract ideas” under Diamond v. Diehr, the CAFC then tried to answer the question of eligibility with guidance from Bilski that “[r]ather than adopting categorical rules that might have wide-ranging and unforeseen impacts,” exclusions from patent-eligibility should be considered in view of the particular case and applied narrowly.

On remand, the Court that the claimed subject matter of two of the three Classen patents is eligible under §101 to be considered for patenting, although recognizing that the claims may not meet the substantive criteria of patentability as set forth in §102, §103, and §112 of Title 35.

The case involves three related patents, each entitled “Method and Composition for an Early Vaccine to Protect Against Both Common Infectious Diseases and Chronic Immune Mediated Disorders or their Sequelae”: US Pat. Nos. 6,638,739; 6,420,139 and 5,723,283.

The patented method of the ’139 and ’739 patents is exemplified by Claim 1 of the ’739 patent. Claim 1 states:

1. A method of immunizing a mammalian subject which comprises:

(I) screening a plurality of immunization schedules, by

(a)     identifying a first group of mammals and at least a second group of mammals, said mammals being of the same species, the first group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a first screened immunization schedule, and the second group of mammals having been immunized with one or more doses of one or more infectious  disease-causing organism-associated immunogens according to a second screened immunization schedule, each group of mammals having been immunized according to a different immunization schedule, and

(b)    comparing the effectiveness of said first and second screened immunization schedules in protecting against or inducing a chronic immune-mediated disorder in said first and second groups, as a result of which one of said screened immunization schedules may be identified as a lower risk screened immunization schedule and the other of said screened schedules as a higher risk screened immunization schedule with regard to the risk of developing said chronic immune mediated disorder(s),

(II) immunizing said subject according to a subject immunization schedule, according to which at least one of said infectious disease-causing organism-associated immunogens of said lower risk schedule is administered in accordance with said lower risk screened immunization schedule, which administration is associated with a lower risk of development of said chronic immune-mediated disorder(s) than when said immunogen was administered according to said higher risk screened immunization schedule.

The §101 Threshold

§101. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

In Le Roy v. Tatham (1852), the Court reiterated that “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.”

The district court held that none of the Classen claims meets the threshold under §101 of eligibility for patenting, reasoning that the method claimed in all three patents includes the mental step of reviewing the relevant literature to determine the lower-risk immunization schedule.

However, precedent has recognized that the presence of a mental step is not of itself fatal to §101 eligibility, and that the “infinite variety” of mental and physical activity negates application of a rigid rule of ineligibility. See Application of Prater, 415 F.2d 1393, 1402 n.22 (CCPA 1969).

Classen argued that the immunization step is required so that the claims are not directed to an abstract idea like the commodity hedging method in Bilski v. Kappos.  The Court in Bilski v. Kappos did not define “abstract,” and Justice Stevens observed in concurrence that “[t]he Court, in sum, never provides a satisfying account of what constitutes an unpatentable abstract idea,”

The court agreed:

The claims of the ’139 and ’739 patents are directed to a method of lowering the risk of chronic immune-mediated disorder, including the physical step of immunization on the determined schedule. These claims are directed to a specific, tangible application, as in Research Corporation, and in accordance with the guidance of Bilski v. Kappos that “[r]ather than adopting categorical rules that might have wide-ranging and unforeseen impacts,” exclusions from patent-eligibility should be applied “narrowly,” 130 S. Ct. at 3229, we conclude that the subject matter of these two patents traverses the coarse eligibility filter of §101.

The representative claim of the ’283 patent is directed to the single step of reviewing the effects of known immunization schedules, as shown in the relevant literature. Although recourse to existing knowledge is the first step of the scientific method, the method claimed in the ’283 patent simply invites the reader to determine the content of that knowledge. The ’283 claims do not include putting this knowledge to practical use, but are directed to the abstract principle that variation in immunization schedules may have consequences for certain diseases. … We conclude that the immunization step moves the ’139 and ’739 claims through the coarse filter of §101, while the abstraction of the ’283 claim is unrelieved by any movement from principle to application.

The dissent argued that there is “no distinction” between the claims of the ’283 patent and the claims of the ’139 and ’739 patents.

The “Safe-harbor” Provision, 35 U.S.C. §271(e)(1)

Classen claimed that Biogen and GlaxoSmithKline infringed on the ground that both companies participated in studies “to evaluate suggested associations between childhood vaccinations, particularly against hepatitis B and Haemophilus influenza . . . and risk of developing type 1 diabetes; and to determine whether timing of vaccination influences risk.” Classen also stated that Biogen induced infringement by licensing technology to GlaxoSmithKline and “providing instructions and/or recommendations on a proper immunization schedule for vaccines.” The district court granted summary judgment that these activities are within the safe-harbor provision of the Hatch-Waxman Act:

§271(e)(1). It shall not be an act of infringement to make, use, offer to sell, or sell within the United States . . . a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.

Classen argued that the district court erred in its application of §271(e)(1). Classen states that this statute, as enacted and intended, and as judicially interpreted, is limited to activities conducted to obtain pre-marketing approval of generic counterparts of patented inventions, before patent expiration.

GlaxoSmithKline and Biogen countered that their reporting of vaccine relationships, or recommendations in view of the relevant literature, or other activity in conformity with FDA regulations, are within the infringement safe-harbor of §271(e)(1).

The CAFC sided with Classen on this point:

§271(e)(1) provides an exception to the law of infringement in order to expedite development of information for regulatory approval of generic counterparts of patented products. The statute does not apply to information that may be routinely reported to the FDA, long after marketing approval has been obtained.

Section 271(e)(1) arose in the Drug Price Competition and Patent Term Restoration Act of 1984 (“Hatch-Waxman Act”), 98 Stat. 1585. The House Report explains that the Act “provides that it is not an act of patent infringement for a generic drug maker to import or to test a patented drug in preparation for seeking FDA approval if marketing of the drug would occur after expiration of the patent.”

This purpose was emphasized throughout the legislative process: “The purpose of sections 271(e)(1) and (2) is to establish that experimentation with a patented drug product, when the purpose is to prepare for commercial activity which will begin after a valid patent expires, is not a patent infringement.” Id. Again in Part 2 of H.R. Rep. No. 98-857, at 8 (1984), the Report is explicit that “the only activity which will be permitted by the bill is a limited amount of testing so that generic manufacturers can establish the bioequivalency of a generic substitute.” The Report states that “the generic manufacturer is not permitted to market the patented drug during the life of the patent; all that the generic can do is test the drug for purposes of submitting data to the FDA for approval.” Id. at 30. The activities of which Biogen and GlaxoSmithKline are accused by Classen cannot be stretched into this role.

In Merck KGaA v. Integra Lifesciences I, the Court said that “§271(e)(1) leaves adequate space for experimentation and failure on the road to regulatory approval . . . .” The Court held that preclinical research, whether or not ultimately included in a submission to the Food and Drug Administration, is exempted from infringement by §271(e)(1) “as long as there is a reasonable basis for believing that the experiments will produce ‘the types of information that are relevant to an IND [investigational new drug application] or NDA [new drug application].’” Id. at 208 (quoting Brief for United States as Amicus Curiae 23).

In contrast, the Biogen and Glaxo activities charged with infringement are not related to producing information for an IND or NDA, and are not a “phase of research” possibly leading to marketing approval. Merck v. Integra does not provide a §271(e)(1) safe harbor for these activities.


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Mashable has an infographic on the recent patent wars.  Winding its way from the early conceptions of patent rights to trends in patent filings and ending with recent patent tiffs involving tech companies like Apple, Microsoft and Samsung.

Google executives said that a major reason they were willing to pay $12.5 billion for Motorola Mobility is for the 17,000 issued patents and an additional 7,500 pending patents the company holds.

Earlier, a consortium of Apple, Microsoft, RIM, Sony, and others bought over 6000 patents from Nortel — beating out an offer by Google.

Patents continue to be at the center of the technology universe.  Last year, 107,792 patents were issued by the U.S. alone.

Patent Wars
Via: Business Insurance Site

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This is the second of a series of articles on IP and Antitrust issues.  This article deals with the need for licensing of intellectual property, licensing in the past and present and the antitrust concerns associated with it.

Possession of intellectual property is just one step in a chain of production and manufacturing. Once the patent has been procured, the product has to be manufactured or the process has to be applied towards manufacture. In case of an independent inventor, he usually does not possess the resources to carry out large-scale production. And in case of R&D companies that are holder of the intellectual property, they either have subsidiary manufacturing units or outsource it to companies that do possess the requisite infrastructure to carry out large-scale production. In either case, the intellectual property must be properly licensed. Licensing, cross-licensing and other similar means of conveyance of  intellectual property facilitates integration of the licensed property with complementary factors of production. This type of arrangement proves beneficial to the inventor as well as the manufacturer and thereby consumers as it greatly reduces costs and provides incentives for inventions and improvements thereupon.

In the past, the approach toward licensing arrangements was quite unbending. The Department of Justice identified a list of forbidden practices (the “Nine No-Nos” of intellectual property licensing; first espoused by Bruce Wilson in “Patent and Know-How License Arrangements: Field of Use, Territorial, Price and Quantity Restrictions”). The Nine No-Nos consisted of the following:

  1. Royalties not reasonable related to sales of the patented products;
  2. Restraints on licensees’ commerce outside the scope of the patent (tie-outs);
  3. Requiring the licensee to purchase unpatented materials from the licensor (tie-ins);
  4. Mandatory package licensing;
  5. Requiring the licensee to assign to the patentee patents that may be issued to the licensee after the licensing arrangement is executed (exclusive grant backs);
  6. Licensee veto power over grants of further licenses;
  7. Restraints on sales of unpatented products made with a patented process;
  8. Post-sale restraints on resale; and
  9. Setting minimum prices on resale of the patent products.

It was an attempt by patent holders to extend the boundaries of their monopolies over unpatented supplies and to gain control over improvements of their innovations, to determine resale prices of their patented products or to engage in market allocation. (Gilbert R., & Shapiro C., Antitrust Issues in the Licensing of Intellectual property: The Nine No-No’s Meet the Nineties)

Recent times have however witnessed the shrinking of this list of No-No’s to just one: illegal tying.  (In re Independent Servs. Orgs. Antitrust Litig. (“Xerox”), 203 F.3d 1322).

The Xerox case (with allegations similar to Kodak case discussed in the last post) held that in absence of any illegal tying, patent holder may exclude others from making, using, selling or licensing the claimed invention free from liabilities under the antitrust laws so long as the antitrust effect is not extended beyond the scope of patents.

There are a limited number of cause of action arising from unlawful licensing practices (after the shrinkage of the nine no-no’s to one). They are:

  1. Government actions: FTC or DOJ can initiate investigations based on anticompetitive practices. In the U.S. v. Microsoft case, FTC sought to investigate the competitive practices of Microsoft based on an agreement between Microsoft and IBM. The object of investigation was Microsoft’s use of its market power in PC operating systems and its licensing practices with original equipment computer manufacturers. The DOJ took over the investigation and brought against Microsoft the complaint of  unlawfully maintaining monopoly and unreasonable restrained trade by using exclusionary licensing agreements with manufacturers and requiring independent applications to sign onerous NDAs. The relief sought may be injunctive or criminal penalties.
  2. Private Actions: Private claims arising from unlawful licensing arrangements may cause courts to impose penalties via damages.
  3. Patent and Copyright misuse: Unlawful licensing arrangements might be deemed misuse and render the patent or copyright unenforceable. (Patent misuse is grist for a separate article.)

Finally, whether a particular licensing agreement violates antitrust statute or not depends on whether the relationship between parties is horizontal or vertical and what test is applied.

Horizontal relationship is construed when parties could be considered as actual or potential competitors in a relevant market in absence of the license. Parties are considered to be in a vertical relationship when they are in a complementary relationship, in different stages in the chain or production/distribution. Neither does the presence of a horizontal relationship does not in itself indicate anticompetitive practice nor does a vertical relationship guarantee the absence of the same. The classifications merely raise the possibility of the existence of anticompetitive practices. One can ask the following questions to determine of the licensee could compete lawfully with the licensor:

  1. Did the licensee have the technical capability and/or resources necessary to enter the relevant market without the licensing arrangement?
  2. Is there any evidence that the licensee had any intention of entering the relevant market absent the licensing arrangement in question?
  3. Would the licensee have been precluded from entering the relevant market by the licensor’s intellectual property?

(See Reference)

Having asked these questions, one proceeds to the tests to be applied to licensing restraint: Per Se v. Rule of Reason. An antitrust rule of reason basically involves an inquiry into whether the consequences of the license are anticompetitive in nature and if so, whether the final pro-competitive outcome of such restraints outweighs the anticompetitive effects.

A per se analysis is that the licensing arrangement is to be treated as per se unlawful without an inquiry into whether it has any competitive benefits. Generally horizontal relationships are analyzed by the per se rule- as conduct that is so plainly anticompetitive that no inquiry is necessary. Price-fixing, market allocation, tying arrangements, etc., are all practices which must be analyzed by the per se rule.

The next topic in this series deals with different types of licensing restrictions.

See part I here: Intellectual Property & Antitrust Issues: Market Power

Today’s post is by Guest Barista Shalini Menezes of D:ic.t:um.

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Is Google Gearing Up for a Patent Fight?

Alan Wan, at Patently-O, looks at the recently recorded assignment of 1029 patents from IBM to Google – which more than doubles the number of U.S. patents assigned to Google.  A review of the patents suggests that they were carefully chosen from among IBM’s tens of thousands of patents in order to be most effective in a patent fight against the other technology giants and the patents appear to have been chosen for one adversary in particular – Apple.  What stands out is the unusually broad topics that are covered and the topics covered appear to be a tilt towards consumer and network applications with an absence of patents pertaining to IBM’s supercomputers.

Are You A Legal Rebel?

Nominations are now open for the 2011 Legal Rebels project.  This year, the ABA Journal is looking for lawyers and senior staffers who are remaking their corner of the profession at trend-setting Top 250 law firms. The Legal Rebels project has featured the profession’s top innovators who are questioning and changing the status quo.  While the recession has upended the stalwart business paths of some firms, others have embraced new courses with the awareness that many of the profession’s traditions—including those at most successful law firms—were once radical innovations.  Fill out the form to suggest a lawyer they should profile.

7 Essential Apps for Busy Legal Professionals

The Lawyerist has an article naming the essential iPhone/iPad apps.  We are especially fond of his picks of Instapaper – save web pages with 1-click to read later.   Evernote – From jotting down quick ideas as they occur. Google Apps – a suite of applications from email to documents, spreadsheets and presentations, all stored in the cloud.  Upgrade to Google Apps for Business for only $50 a year and get additional storage along with a few other perks.  Dropbox – For the few documents that I store on my local hard drive, I gain some peace of mind by sync documents stored locally on your device to the cloud.

Teva’s Lawsuit Against Viagra Patent Wilts

Pfizer Inc.’s  Viagra will maintain its exclusivity for treating ED at least until 2019.  A federal judge upheld U.S. Pat. No 6,469,012 for Viagra that was granted in 2002 and specifically covers the use of the drug’s active ingredient, sildenafil, for treating erectile dysfunction.   Teva Pharmaceuticals argued that the patent was invalid because anyone well-versed in the art of drug making would have known, from prior research, that sildenafil could be effective as an ED treatment. Pfizer contended that the use of sildenafil in oral form for treating ED was a novel, patent-worthy discovery.  Federal judge Rebecca Smith sided with Pfizer in a 110-page opinion, stating that Teva had not shown “by clear and convincing evidence” that the patent was invalid. “There is utterly no evidence” to support Teva’s claim that that Pfizer intentionally withheld documents from the U.S. Patent and Trademark Office.

We Need Biotechnology If We Are To Have Enough Food

Nina V. Fedoroff writes in the NY Times that the problems of high food prices and the swelling ranks of the hungry are going to come to a disastrous end without the aid of biotechnology. The adoption of genetically modified herbicide-tolerant soybeans has made it easier for farmers to park their plows and forgo tilling for weed control. No-till farming is more sustainable and environmentally benign because it decreases soil erosion and shrinks agriculture’s carbon footprint.  In 2010, crops modified by molecular methods were grown in 29 countries on more than 360 million acres. Of the 15.4 million farmers growing these crops, 90 percent are poor, with small operations. The reason farmers turn to genetically modified crops is simple: yields increase and costs decrease.  We need to change the regulatory burden slowing down the development of genetically modified crops.

Learn How To Use (and Not Use) Email

The CounseltoCounselBlog wants you to learn to use email correctly.  Please.  While social media is growing in importance as a tool for mass communication, e-mail still has an important role in a law practice.    But we still have a “Tower of Babel” problem when it comes to e-mail.  Simply put, different users of e-mail speak “different languages”. Smartphone users tend to prefer terse e-mail messages.   People who mainly  use their desktop or laptop computers may have more tolerance for lengthy messages.  My pet peeve?  Use descriptive subject lines!!  Good subject lines help the recipient to quickly decide if they need to read the message right away and if the message requires a quick response.

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The U.S. Patent and Trademark Office made a change in policy based on the recent decision of In re Tanaka. Basically, the PTO has said that in a reissue application, the addition of claims that are narrower in scope than the existing claims, without any narrowing of the existing patent claims, may be the basis for correcting an error under 35 U.S.C. § 251 to support a proper reissue application.

A rejection under 35 U.S.C. § 251 will no longer be made in this scenario, provided that the claims are otherwise compliant with 35 U.S.C. § 251. This change revises the policy in the current Manual of Patent Examining Procedure (MPEP) that is provided in MPEP § 1402, which was not consistent with the Tanaka decision.

Tanaka sought reissue to add one dependent claim to his original patent. Because the only error alleged was the failure to present the narrower dependent claim during the original patent examination, the examiner rejected the reissue application under 35 U.S.C. § 251, relying on MPEP § 1402. The Board of Patent Appeals and Interferences affirmed the examiner and the matter was appealed to the U.S. Court of Appeals for the Federal Circuit.

On appeal, the Federal Circuit held, in its decision of In re Tanaka, that “the omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.” Tanaka, 640 F. 3d at 1251, 98 USPQ2d at 1334. The court went on to state that:

“[t]his court also rejects the PTO’s assertion that the omission of a narrower claim from an original patent does not constitute an error under § 251 because the omission of a dependent claim does not render the patent inoperative. While the Board correctly recognized that a patent is inoperative under § 251 if it is ineffective to protect the disclosed invention, the Board improperly assumed that Tanaka’s original patent cannot be deemed partly inoperative in the absence of claim 16, whose scope is subsumed by  claim 1, from which it depends…. Finally, this court rejects the Board’s conclusion that adding a single dependent claim to the originally issued claims is equivalent to the disallowed practice of filing a ‘no defect’ reissue.” Tanaka, 640 F. 3d at 1250-51, 98 USPQ2d at 1334 [emphasis added].

Even further, the court stated that “…the narrow rule relating to the addition of dependent claims as a hedge against possible invalidity has been embraced as a reasonable interpretation of the reissue statute by this court….” Tanaka, 640 F. 3d at 1251-52, 98 USPQ2d at 1335.

Now, the Patent Office has directed:

Where the only change to a patent made in an application for its reissue is the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims, the application claims are not to be rejected as failing to state an error under 35 U.S.C. § 251. In addition, any rejection of record in a pending application on this basis will be withdrawn, and any new Office action issued will inform applicant of the withdrawal, and the resulting status of the application in view of the withdrawal.

See the Tanaka Notice here.

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Some interesting news out of Government Executive Magazine.  Yes, I know you read this religiously.  That is to say, you read it while praying the government doesn’t do yet more stupid things.  A recent survey among federal employees shows “More than half of federal workers value creativity and innovation in their jobs.”

The Partnership for Public Service and the Hay Group found 63.3 percent of employees gave the government a positive score on innovation. Or, about 36.7 percent think they’re stuck in a creativity black hole.  The percentage was based on questions posed in the Office of Personnel Management’s annual survey of federal employee attitudes; the 2010 survey included more than 263,000 employees from 32 large agencies, 34 small agencies and 224 agency subcomponents.

The questions posed were:

  1. I am constantly looking for ways to do my job better.
  2. I feel encouraged to come up with new and better ways of doing things.
  3. Creativity and innovation are rewarded.

What’s interesting is that when asked an “I” question, 91.4 percent said they personally were constantly looking for ways to do their jobs better.  What drags down the scores is that only 39% percent of employees felt their agency rewarded creativity and innovation, and 59.6 percent of respondents said they felt agencies and managers encouraged them to devise new and better ways of doing things.  How can all the employees be simultaneously acting to innovate while being put down by the man.  They are the man!

So, how did the U.S. Patent and Trademark Office fare? It ranked 215 out of 223 agencies surveyed.  OK, I get that NASA ranked number one with a 78.8% innovation score.  They are rocket scientists, right?  But the Patent Office is all about invention.  It came in with a score of 54.6, just slightly higher than the U.S. Mint.  What really pulled down the score?  Just 29.2% agreed that creativity and innovation are rewarded.

Employees need to feel invested in innovation, so reward them for suggesting great ideas that fly and for “failing fast” with ones that don’t quite get off the ground.  Employees who are empowered to express their creativity and think outside the box are more likely to feel compelled to help increase productivity.   If you reward innovation and creativity, you can create a workforce committed to improving the bottom line.

If it’s true that 80% of innovations occur by mistake, then we need to encourage trying new ideas.  Sure, most new ideas will fail, but trying is the only way to get to ideas that succeed.

I am encouraged by the report on “10 Apps Changing Government.  It would be great to have a PAIR system app on your iPhone for looking at records at the PTO.  But then, remember the EFS/PASAT software debacle that required applicants to assemble an application into an open-standard XML format?

What’s really scary is that you can purchase swag, including the NextGov baby onesie.  Maybe I should give one away.  Hmmmm.

(via Hal Wegner)

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This is the first of a series of articles on IP and Antitrust issues. This article introduces the topic and the governing laws and guidelines. The next few articles will deal with intellectual property licensing practices, patent pooling and cross-licensing, antitrust/anti-competitive issues in the field of licensing, effects of restrictions in intellectual property licenses and the antitrust consequences of the bundling of various types of intellectual property rights.

We live in a rapidly evolving world where intellectual property is fast replacing physical, real property as assets of a corporation. This means that laws existing for traditional business operations must be stretched to encompass this new form of property. Antitrust laws starting with the Sherman Act, Clayton Act and terminating into the Federal Trade Commission Act must be interpreted in light of their application to intellectual property.

Within intellectual property, as we know there exist several branches. However, we confine ourselves to patents specifically, as this is a dominant form of assets for most corporations. Discussing patents and antitrust laws in the same topic is quite ironic. While antitrust laws prohibit any contract in restraint of trade (See Section 1 of the Sherman Act below), patents on the other hand grant the patent holder unlimited, albeit negative rights of excluding competitors from making, using, selling or otherwise exploiting the invention. The Supreme Court in the Standard Oil Case interpreted Section 1 as prohibiting only restraints of trade that unreasonably restrict competition.

Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce among the several States, or with foreign nations, is declared to be illegal. Every person who shall make any contract or engage in any combination or conspiracy hereby declared to be illegal shall be deemed guilty of a felony, and, on conviction thereof, shall be punished by fine not exceeding $100,000,000 if a corporation, or, if any other person, $1,000,000, or by imprisonment not exceeding 10 years, or by both said punishments, in the discretion of the court. 15  U.S.C. § 1

So how does one bridge the gap between antitrust laws and patent laws? Is one to understand that patent laws are inherently monopolistic in nature? In which case, the Congressional intent in enacting the Sherman, Clayton and FTC Acts is questionable. Is it that patent laws are divest from the purview of antitrust laws or can they be viewed as two sides of the same coin- aiding and abetting one another in enhancing consumer welfare and promoting innovation?  “[T]he aims and objectives of patent and antitrust laws may seem, at first glance, wholly at odds. However, the two bodies of law are actually complementary, as both are aimed at encouraging innovation, industry and competition.” Atari Games Corp. v. Nintendo of America, Inc., 897 F.2d 1572, 1576.  One may seek recourse to case laws, old and new, in addition to the various FTC reports in order to make sense of this conundrum.

If one is to subscribe to Judge Posner’s view, then one can arrive at a conclusion immediately as he held that exercise of monopoly power, including setting up monopolistic prices is not in contravention to antitrust laws as long as such monopoly was acquired by lawful means.

FTC’s last report on antitrust and patents addresses a number of issues such as refusals to license patents, collaborative standard setting, patent pooling, intellectual property licensing, the tying and bundling of intellectual property rights, and methods of extending market power conferred by a patent beyond the patent’s expiration.

Patents as discussed above grant exclusive rights to inventors to exclude others from exploiting the patented invention without appropriate license. These laws thus promote innovation, commercialization and further improvements by making public disclosure of the inventive steps mandatory.

Antitrust laws, for their part, ensure that new technologies, products and services are bought, sold, traded in a competitive environment. They also make sure that all commercial transactions are free from collusions, anticompetitive mergers and monopolistic tendencies.

The intellectual property laws and antitrust laws share a common goal in that they both promote innovation and consumer welfare by prohibiting actions such as imitation without compensation, monopolistic prices and an oligopoly, which inhibits a fair market. The two are thus wedded to each other.

The Antitrust-IP Guidelines have been an indispensable part of the Agencies’ analysis of intellectual property and antitrust issues. In brief, the guidelines emphasize three general principles:

  1. Antitrust rules apply to intellectual property agreements as they would apply to agreements involving any other form of property.
  2.  Possession of any form of intellectual property does not by itself create a market power. The presence of substitutes for the patented product or process prevents exercise of market power and
  3.  That intellectual property licensing is not in contravention to competition issues as it allows firms to combine intellectual property rights with other complementary rights of production such as manufacturing and production facilities and workforces.  Antitrust-IP Guidelines §2-1

We end this segment with the analysis of a landmark care of Image Technical Services, Inc., v. Eastman Kodak Co., 125 F.3d 1195, which clarifies the concept of market power. Kodak manufactures and sells photocopiers and micrographic equipment as well as replacement parts for its equipment. Kodak began restricting plaintiffs’ access to its photocopier and micrographic parts. Kodak also secured agreements from their equipment manufacturers not to sell parts to the plaintiffs.

Section 2 of the Sherman Act reads inter alia, “Every person who shall monopolize, or attempt to monopoloze, or combine or conspire with any other persons, to monopolize any part of the trade or commerce…[commits a felony].”  15 U.S.C. §2

Market power can be shown to exist via circumstantial evidence or direct evidence. Circumstantial evidence must: “(i) define the relevant market, (ii) show that the defendant owns a dominant share of that market, and (iii) show that there are significant barriers to entry and show that existing competitors lack the capacity to increase their output in the short run.” Rebel Oil Co. Inc., v. Atlantic Richfield Co., 51 F.3d 1421, 1434.

In this case, the court held that Kodak had held monopolies over the photocopier parts market as well as the micrographic parts market. Kodak tried to argue (unsuccessfully) that each part constituted a separate market and that the plaintiffs should demonstrate that they could not obtain nonpatented parts and that the failure to obtain that particular part was a result of Kodak’s monopoly over service.

However, it seems obvious that each of the numerous parts of equipment is required for functioning of the photocopier or micrograph. Therefore, the individual parts cannot be bifurcated into as many markets.

The second element of market share is thus calculated. A dominant share of the market carries with it the power to control the output across the market and thereby control prices. Id. at 1437.  Since Kodak controls nearly 100% of the parts market and 80-95% of the service market, with no readily available substitutes, it suffices to assume that Kodak controls the market.

The third factor of monopoly power is in regards to barriers to market entry and barriers to expansion. Common entry barriers include patents or other licenses, control of essential or superior resources, entrenched buyer preferences, high capital entry costs and economies of scale. United States v. Syufy Enterprises, 903 F.2d 659, 663. The court found Kodak to hold 220 patents, control of its designs and tools, brand name power and manufacturing capability. Kodak was also found to control its own original-equipment manufacturers through various contract arrangements. Court found a high barrier to entry to new manufacturers.

The Court also sought to harmonize antitrust principles with those of intellectual property. Despite the tension between the two, it is clear that –

  1.  patent holders are not immune from antitrust liability and
  2.  patent holders may refuse to sell or license protected work.

A monopolist who acquires a dominant position through obtaining intellectual property rights may violate §2 of Sherman Act if the monopolist exploits the dominant position to enhance monopoly in another market. Thus intellectual property rights do not confer an absolute immunity from antitrust liabilities.

In conclusion, the general understanding is that refusal on part of the patent holder to grant a license does not in itself create antitrust liabilities. It is only conditional refusals to grant licenses that create barrier to entry or future growth that give rise to antitrust claims.

Today’s post is by Guest Barista Shalini Menezes of D:ic.t:um.

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In Clean Tech Intellectual Property: Eco-marks, Green Patents, and Green Innovation, author Eric L. Lane provides a concise review of the interplay of clean technologies and IP.  In it, he treats clean/green tech IP as a discrete field apart from the general intellectual property law.

Section one of the book presents strategies for patent drafting and prosecuting clean tech patent applications, building green patent portfolios and clean tech transfer and licensing.  Clipper Windpower is used as an example of developing a patent portfolio, including its efforts to design around a blocking variable speed wind turbine patent.  Section two covers clean tech in court and covers litigation tops involving wind turbines and LEDs. Topics also include discussions of non-practicing patentees (NPP’s) in the clean tech world.

Green branding, greenwashing and eco-mark enforcement are covered in section three with special attention given to issues of eco-mark prosecution and green branding, from the brand owner perspective and from a consumer protection standpoint, including a discussion of greenwashing — the practice of companies spinning their not-so-green products and policies as environmentally friendly.  Section four covers green patent policies, initiatives and debates including the Eco-Patent Commons for exchanging technology rights.

Rightfully, the book covers the debate over IP rights in low-income developing countries.  Intellectual property issues come in to play with public policy questions about energy research and development. If someone develops a green technology, the best choice for the environment would be to give it away as cheaply as possible so that the maximum number of people could benefit. But giving a technology away undermines the incentives that private companies have to develop new technologies.

Similar to the debate regarding access to essential medicines, as poorer countries develop economically, their ecological footprint will grow. Affluent consumers have an interest in making this development as green as possible, but we are reluctant to let others free ride on our innovative work. To what extent should we share technologies with them, and on what terms?

Clean Tech Intellectual Property: Eco-marks, Green Patents, and Green Innovation” provides a comprehensive review of intellectual property and clean technology.  It can be dense with information but provides essential background to those new to the field.  It’s clear that green is here to stay.

Clean Tech Intellectual Property: Eco-marks, Green Patents, and Green Innovation, 260 pp. is available from Amazon.

About the Author

Eric Lane is a patent and trademark attorney at Luce, Forward, Hamilton & Scripps in San Diego, where he is Special Counsel in the Technology / Intellectual Property practice group and the Climate Change, Renewable Energy & Sustainable Technology practice group

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