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Judicial Advocacy 2012

Gunn v. Minton, U.S., No. 11-1118, amicus brief filed 11/26/2012.

In a November 26, 2012 amicus brief, AIPLA argued to the U.S. Supreme Court that the Supreme Court of Texas erroneously decided that a malpractice claim against a patent attorney belongs in federal court pursuant to 28 U.S.C. 1338 as a claim arising under the patent laws. The brief in support of the patent lawyer points out that the Texas court applied a lenient standard of federal jurisdiction based on a Federal Circuit reading of the Supreme Court's opinion in Christianson v. Colt Indus. Operating Corp., where the very existence of patent law issues in a state-law case necessarily makes those issues "substantial" to invoke federal subject matter jurisdiction. According to the brief, a patent issue raised in a state court is not substantial if it requires only the application of patent law. On the other hand, it is substantial if it raises significant issues of patent law, i.e., issues relating to the validity, construction or effect of patent laws whose resolution would settle a significant question of patent law and govern future cases. The brief also argues that the Federal Circuit case law gives inadequate consideration to federalism concerns about state-federal judicial responsibilities.

Already, LLC d/b/a Yums v. Nike, Inc., U.S., No. 11-982, amicus brief filed 10/1/2012.

In an October 1, 2012 amicus brief, AIPLA argued to the Supreme Court that a trademark plaintiff’s covenant not to sue delivered to the defendant eliminated the Art III case or controversy jurisdiction for the district court to hear the defendant’s declaratory judgment counterclaim that the plaintiff’s trademark is invalid. The plaintiff's voluntary dismissal of its action, its promise not to sue, and the absence of any evidence that the defendant has any concrete and immediate plans to infringe would reduce any decision on the declaratory judgment to a prohibited advisory opinion, according to the brief.  Once the covenant not to sue was delivered to the defendant, the plaintiff satisfied its burden of production as to its motion to dismiss, the brief argued, and it was incumbent on the defendant as part of its burden of proving jurisdiction for its claim to establish that the covenant was insufficient.

Robert Bosch LLC v. Pylon Manufacturing Corp., en banc Fed. Cir., No. 2011-1363, -1364, amicus brief filed 9/26/2012.

In a September 26, 2012 amicus brief, AIPLA argued to the en banc Federal Circuit that the Court has no jurisdiction over an interlocutory appeal under 28 U.S.C. 1292(c)(2) where a claim of willfulness is still pending in the district court. The statute permits interlocutory appeals where the only remaining matter unresolved below is an "accounting," which does not encompass an undecided willfulness charge. Neither the established meaning of an "accounting" in the intellectual property field nor the history of Section 1292(c)(2) can support a different conclusion, the brief argued, concluding that a contrary conclusion would risk multiplying interlocutory appeals and degrading judicial efficiency. 

Kirtsaeng v. John Wiley and Sons, Inc., U.S., No. 11-697, amicus brief filed 9/7/2012.

In a September 7, 2012, amicus brief supporting the respondent, AIPLA argued to the Supreme Court that the Second Circuit correctly rejected the first sale defense in this copyright infringement case, but that it reached this correct result with the wrong analysis. According to the brief, the Second Circuit mistakenly found that the “lawfully made under this title” language of 17 U.S.C. 109(a) renders that section inapplicable to foreign-made copies.  The correct view, the brief argued, is that the presumption against extraterritorial application of U.S. laws precludes recognition of the Section 109(a) right to dispose a lawful copy before the copy has entered the United States. In this case, the first time the copies at issue were subject to U.S. copyright law was when they entered the United States without the authority of the copyright owner.  Under Section 602(a) such unauthorized importation constitutes an infringement which occurred before the Section 109(a) right “to sell or otherwise dispose of” a copy was available to the Petitioner.

Beer v. U.S., Fed. Cir., No. 2010-5012, en banc amicus brief filed 7/9/2012.

AIPLA joined with other bar associations in a July 9, 2012 amicus brief to the en banc Federal Circuit, supporting a challenge to the statue abrogating cost-of-living salary increases for federal judges as unconstitutional.  Article III of the Constitution states that judges of the Supreme and inferior courts shall receive “a compensation which shall not be diminished during their continuance in office.”  The brief argues that the periodic salary adjustments for judges, beginning with the Ethics Reform Act of 1989, were vested and are thereby covered by the Constitution’s bar against reduction.

Association for Molecular Pathology v. Myriad Genetics, Inc., Fed. Cir., No. 2010-1406, amicus brief filed 6/15/2012.

In a June 15, 2012 amicus brief, AIPLA argued to the Federal Circuit that the Supreme Court’s decision in Mayo v. Prometheus does not require the appellate court to change its decision in Association for Molecular Pathology v. Myriad.  The Myriad case, which was on review at the Supreme Court for the patentability of Myriad’s isolated DNA claims, was remanded to the Federal Circuit for reconsideration in light of the high court’s Prometheus decision. Prometheus found certain asserted process claims to be ineligible for patent protection because they failed to do “significantly more” than recite a law of nature. 

Beer v. U.S., Fed. Cir., No. 2010-5012, amicus brief filed 4/16/2012.

AIPLA, in an April 16, 2012 amicus brief filed jointly with other bar associations, argued in support of the petition for rehearing en banc in a suit over the constitutionality of abrogating cost-of-living salary increases for federal judges. The brief argues that the Ethics Reform Act of 1989 provides federal judges with a vested right to future pay that may not be reduced without violating the "Compensation Clause" of the Constitution (Article III, Section 1).

Kirtsaeng v. John Wiley and Sons, Inc. U.S., No. 11-697, amicus brief supporting cert. petition filed 1/6/2012.

AIPLA, in a January 6, 2012 amicus brief, argued to the Supreme Court that it should review the Second Circuit's holding that the first sale defense under the Copyright Act does not apply to works made abroad. The brief argues that the Supreme Court's previous 4-4 split on this issue has resulted in conflicting interpretations in three circuit courts. Certainty in the applicability of the first sale defense is needed to help copyright owners and users prevent costly litigation.