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Judicial Advocacy 2010

Board of Trustees for Leland Stanford Junior University v. Roche Molecular Systems, Inc., U.S. No. 09-1959, merits amicus brief filed 12/23/2010.

AIPLA, in a December 23, 2010, amicus brief supporting neither party, argues to the Supreme Court that the Bayh-Dole Act did not change the well established rule that patent rights in an invention vest initially and personally with the inventor, and that such rights generally must be conveyed expressly, despite Government funding arrangements made for the inventor's research. The brief addresses a case in which an inventor's assignment agreement was found by the Federal Circuit to be a "mere promise to assign rights in the future, and not an immediate transfer of expectant interests." By contrast, a later agreement with a collaborating research firm, stating "I do hereby assign," conveyed to that firm immediate equitable title in the inventions, the Court explained.  Under these circumstances, according to the brief, the university had no title for the Government to acquire under Bayh-Dole.

Viacom International Inc. v. YouTube, Inc., 2d Cir., No. 2010-3270, brief filed 12/3/2010

AIPLA in a December 3, 2010 amicus brief supporting neither party argued to a Second Circuit panel that it should affirm the district court’s ruling that more than a generalized knowledge of infringement is required to deprive an Internet service provider (“ISP”) of the protection of the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”). According to the brief, the DMCA requires either “actual knowledge” of specific instances of infringement, or awareness of “facts or circumstances” from which specific instances of infringing activity are apparent. Whether based on actual knowledge or awareness of facts or circumstances, the level of knowledge that is sufficient to strip the ISP of its protection under Section 512 of the Copyright Act, as amended by the DMCA, is knowledge of specific instances of infringement.

General Protecht Group, Inc. v. USITC, Fed. Cir., No. 2010-1378, brief filed 11/8/2010

AIPLA in a November 8, 2010 amicus brief supporting a petition for rehearing en banc argues to the Federal Circuit that the panel's refusal in this case to defer to expert testimony on claim construction presents an opportunity for the Court to reconsider its en banc rule of de novo review of claim constuction under Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc).

Association for Molecular Pathology v. USPTO, Fed. Cir., No. 2010-1406, brief filed 10/29/2010

AIPLA in an October 29, 2010 amicus brief supporting neither party, argues to a Federal Circuit panel that purified and isolated DNA molecules and methods of using them for diagnosing increased cancer risk are eligible for patent protection under 35 U.S.C. §101. The brief urges reversal of a summary judgment that the product claims are directed to products of nature and that the method claims are directed to abstract ideas.

TiVo, Inc. v. EchoStar Corp., Fed. Cir. No. 2009-1374, filed August 2, 2010.

AIPLA, in an August 2, 2010, amicus brief supporting neither party, argues to the en banc Federal Circuit that courts should continue to apply KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985), in considering requests for contempt orders, asking (1) whether a contempt proceeding is appropriate and (2) whether the injunction has been violated in a way that requires a contempt finding. The brief also argues that a contempt finding must be supported by clear and convincing evidence, that good faith is relevant only to a remedy and not to the finding of a violation, that contempt liability should not arise from objectively ambiguous injunctions, and that a district court in equity has the discretion to enjoin conduct beyond that which was specifically adjudicated as infringing.

Therasense, Inc. v. Becton, Dickinson & Co., Fed. Cir. No. 2008-1511, filed August 2, 2010.

AIPLA, in an August 2, 2010, amicus brief supporting neither party, argues to the en banc Federal Circuit that the basis for a finding of inequitable conduct should be fraud on the PTO, provable only with specific intent to deceive. In addition, the brief maintains that materiality should be found only where at least one claim would not have issued "but for" the alleged misconduct, and that limits on inequitable conduct are justified by the severe penalty of unenforceability.

Costco Wholesale Corp. v. Omega, S.A., U.S., No. 08-1423, filed July 8, 2010.

AIPLA, in a July 8, 2010, amicus brief supporting neither party, argues to the Supreme Court that the Ninth Circuit erred in ruling that the availability of copyright first sale defense depends on where a copyrighted item is made. However, the brief takes no position on the ultimate result in this case, and instead asks the Court for better guidance on the applicability of the first sale defense in the context of unauthorized imports where the first sale occurs abroad. The case involves the importation of Swiss-made watches bearing a copyrighted logo which was allegedly infringed by the importation of the watches.

Beer v. U.S., U.S., No. 09-1395, filed June 14, 2010.

AIPLA, in a June 14, 2010, amicus brief filed jointly with other bar associations in support of petitioners, argues to the Supreme Court that the Federal Circuit erred in affirming the dismissal by the U.S. Court of Federal Claims of a suit claiming that Congress has violated the "Compensation Clause" of the Constitution (Article III, Section 1) by failing to provide federal judges with cost-of-living salary increases. According to the brief, the Federal Circuit misinterpreted the Ethics Reform Act of 1989 by refusing to construe the automatic COLA increases as “vested” for purposes of the Compensation Clause.

Richardson v. Stanley Works, Inc., Fed. Cir., No. 2007-1386, filed April 22, 2010.

AIPLA, in an April 22, 2010, amicus brief supporting a petition for en banc review, argues to the Federal Circuit that design patents protect the claimed overall appearance of an article of manufacture, regardless of whether the constituent elements of the claimed design are functional or ornamental. According to the brief, the panel erred in affirming a district court claim construction of a design patent which disregarded features determined to be "functional" as a matter of law, namely the hammer head, the crowbar, the nail claw and the jaw. The brief maintains that the Federal Circuit incorrectly reasoned that design patent claim construction requires that functional features be identified, separated out and disregarded.

Hyatt v. Kappos, en banc Fed. Cir., No. 2007-1066, filed April 9, 2010.

AIPLA, in an April 9, 2010, amicus brief, argued to the en banc Federal Circuit that a plaintiff in a district court action against the Patent and Trademark Office under 35 U.S.C. §145 to challenge a refusal to grant a patent is not barred by the Administrative Procedure Act from presenting new evidence beyond that contained in the agency record. The brief was filed in a case where the district court refused to permit an inventor’s declaration to be admitted with an opposition to a PTO summary judgment because the inventor “negligently” failed to present the evidence in the declaration to the PTO in the proceedings below. The AIPLA brief urged the Court to re-assert its precedent that §145 proceedings are de novo with respect to new evidence presented by either party in connection with issues raised with the PTO. In addition, it argued that the limits on presenting evidence in §145 proceedings are found in the Federal Rules of Evidence, the Federal Rules of Civil Procedure, and traditional principles of equity, and that the evidence issue in this case should be remanded for fact findings under the correct evidentiary standard.

SEB S.A. v. Montgomery Ward & Co., Fed. Cir., No. 2009-1099, filed March 15, 2010.

AIPLA, in a March 15, 2010 amicus brief, filed jointly with the Federal Circuit Bar Association in support of an en banc petition, argues that the en banc Court should clarify the culpable state of mind required to prove liability for inducing patent infringement. According to the brief, the “deliberate indifference” standard recited by the panel in this case adds another layer of uncertainty of the relevant mental state, which has at various times been called specific intent, knowing conduct, recklessness and negligence. According to the brief, the Court should supply a unified legal standard for proving a culpable state of mind for finding of induced infringement.