Sign In

Judicial Advocacy 2013

Highmark Inc. v. Allcare Health Management Systems, Inc., U.S., No. 12-1163, AIPLA amicus brief filed 12/9/2013.

In a December 9, 2013 amicus brief, AIPLA argued to the Supreme Court that the Federal Circuit incorrectly applies a de novo standard of review to a district court's "exception case" determination in awarding attorneys' fees under 35 U.S.C. 285.  Filed in support of neither party, the brief states that the standard applied by the appellate court obscures the fact-based aspect of this determination and abandons the traditional abuse of discretion review that has been applied to Section 285 determinations for more than 60 years.

Octane Fitness, LCC v. Icon Health & Fitness, Inc., U.S., No. 12-1184, AIPLA amicus brief filed 12/9/2013.

In a December 9, 2013 amicus brief, AIPLA argued to the Supreme Court that the Federal Circuit incorrectly limits district court determinations of “exceptional” cases for attorney fee awards to material litigation misconduct, willful infringement, fraud on the Patent Office, or objectively baseless litigation brought in bad faith.  Filed in support of neither party, the brief states that district courts need more flexibility in awarding fees based on the totality of the circumstances to make Section 285 of Title 35 more available as a discretionary case management tool.

Petrella v. Metro Goldwyn Mayer, U.S., No.​ 12-1315, AIPLA amicus brief filed 11/22/2013; oral argument 1/21/2014.

In a November 22, 2013 amicus brief, AIPLA argued to the Supreme Court that laches cannot bar the legal relief of damages for copyright infringement occurring within the three-year statute of limitations period, even if circumstances warrant the elimination of equitable relief for such an offense. The brief urged the Court to vacate and remand a Ninth Circuit ruling that laches can bar all relief, both equitable and legal based on the plaintiff's delay in bringing suit on the initial infringement that the plaintiff learned about 18 years before the current action was brought. While a substantial delay that prejudices a defendant may or may not warrant barring equitable relief, due regard for the statute, the legislature, and copyright policy goals militates against allowing laches to bar the legal remedy of damages for infringing acts within the limitations period.

Lexmark Int’l, Inc. v. Static Control Components, Inc., , U.S. No. 12-873, AIPLA amicus brief filed 8/22/2013; oral argument 12/3/2013.

In an August 22, 2013 amicus brief, AIPLA argued to the Supreme Court that the appropriate analytic framework for determining prudential standing to maintain an action for false advertising under the Lanham Act is the expansive “reasonable interest” test as applied by the Second Circuit. Neither an antitrust standard nor a direct competitor standard adequately reflect the purposes of Congress in enacting the Lanham Act, according to the brief. Although the tests of the Sixth Circuit under Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir. 1982), is similar to the Second Circuit test, the brief maintains that the Second Circuit standard is preferable because that court has a more well-developed jurisprudence on for ascertaining when a reasonable interest has been shown.

Lighting Ballast Control LLC v. Phillips Electronics North America Corp., Fed. Cir. en banc, No. 2012-1014, filed May 20, 2013.

In a May 20, 2013 amicus brief, AIPLA argued to the en banc Federal Circuit that patent claim construction is a mixed question of law and fact requiring deference to the findings of fact by the district court that provide the predicate for the legal conclusion as to the meaning of a claim.  The Federal Circuit thus should overturn the rule in Cybor Corp. v. FAS Techs., Inc. that claim construction is a purely legal question subject to de novo review even for fact-based questions related to claim construction.  The ​Cybor court incorrectly read the Supreme Court's conclusion that claim construction is for a judge, not a jury, to mean that it was reviewable on appeal de novo entirely as a matter of law.  Instead, the meaning of a claim is judged from the perspective of a person of skill in the art, which inherently requires the fact determination of the appropriate skill level and of the perspective of such a person. 

​Federal Trade Commission v. Actavis, Inc., U.S., No. 12-416, filed 2/28/2013.

In a February 28, 2013 amicus brief, AIPLA argued to the Supreme Court that "reverse payment" settlement agreements between drug patent owners and generic drug manufacturers are not per se antitrust violations.  Arguing in support of the Eleventh Circuit decision in this case, the brief maintained that the legality of the agreement should be judged by the "scope of the patent" rule, which inquires whether the terms and conditions of the agreement enlarge the patent owner's right to exclude beyond the scope of the rights conferred by patent.  According to the brief, patent licensing agreements may and commonly do include terms and conditions (such as price restrictions, territorial divisions, and other restraints on competition between the patent holder and the licensee) that, if not for the patent, would be unlawful per se under the Sherman Act.  Thus, reverse-payment settlement agreements should be regarded as per se lawful, absent evidence that the patent was obtained through fraud or that the underlying patent litigation was a sham.

The Association for Molecular Pathology v. Myriad Genetics, Inc., U.S., No. 12-398, filed 1/31/2013.

In a January 31, 2013 amicus brief, AIPLA argued to the Supreme Court that isolated DNA molecules claimed in the patents at issue in this case are not products of nature and are thus patent eligible subject matter under 35 U.S.C. §101. Filed in support of neither party but in support of affirmance, the brief maintains that the question taken for review—“are human genes patentable”—reveals two points of confusion: human genes as they exist in the body are not eligible for patent protection, but the DNA molecules claimed here are not “human genes.” They are compositions of matter that are both structurally and functionally different from human genes, and those differences are man-made, according to the brief. The question also confuses issues of patent eligibility with “patentability,” a term concerned with the validity of the patent as to statutory requirements of novelty, nonobviousness, claiming and disclosure requirements, and enforceability, none of which is at issue in this case. Section 101, by contrast concerns only the gatekeeper issue of eligible subject matter. Finally, the brief refutes the sweeping assertions that these patents preempt all access to the subject matter, pointing to the experimental use exception and to 35 U.S.C. §271(e)(1), which permits use of patented items in developing information for submissions to the U.S. Food and Drug Administration.

Bowman v. Monsanto Co., U.S., No. 11-796, filed 1/23/2013.

In a January 23, 2013 amicus brief, AIPLA argued to the Supreme Court that the authorized sale of patented seed used by the purchaser to produce a first crop does not exhaust the patentee’s right to control subsequent generations of seed that are grown from the first crop.  The brief argues that patent exhaustion applies only to the specific product that is sold by the patentee, and that it does not entitle the buyer of patented seed to recreate the patented invention by propagating subsequent generations of seed. This conclusion, according to the brief, is confirmed by the deliberate policy decision of Congress to provide farmers with such rights under the Plant Variety Protection Act but not under the Patent Act.  This balance between these two regimes of intellectual property protection is dictated by a deliberate policy decision of Congress which the Court should not undermine through an application of the exhaustion doctrine.

CLS Bank International v. Alice Corp. Pty. Ltd., Fed. Cir. en banc, No. 2011-1301, filed 1/17/2013.

In a January 17, 2013 amicus brief, AIPLA argued to the en banc Federal Circuit that the determination of whether a computer-implemented invention is a patent-ineligible “abstract idea” must be based on the degree of detail found in the claimed application of an abstract idea upon considering the claim as a whole. The brief acknowledged that the mere presence of a computer in a claim, generally implementing an abstract idea, does not necessarily lend patent eligibility to an otherwise patent-ineligible claim. On the other hand, a computer limitation may contribute to the patent eligibility of a claim if the claim spells out specific uses of the computer in a way that impose meaningful limits on the scope of the claim, demonstrating more than a superficial role of the computer in permitting a claimed method to be performed or in providing it useful structure. 

​ ​​