April 2009

A previous blog entry – which will not be repeated here – dealt with the strange case of Cornell University v. Hewlett Packard Co., wherein the plaintiff, despite warnings by the trial judge that their damages model was defective, initially sought damages of $575M. The jury found for the plaintiff and awarded damages of $184M. The judge reduced the award to $53M.

Recently, the USPTO rejected claims in a pending patent application directed to the cDNA encoding the human natural killer cell activation inducing ligand (NAIL) protein. The patent examiner took the position that the claimed invention was obvious because the protein was known in the prior art and there were also known, reliable methods for identifying the gene sequence that codes for NAIL.

The patent applicants appealed to the Patent Office Board of Appeals, which affirmed the rejection. Undaunted, the applicants appealed that decision to the CAFC.

Apportionment of damages, one of the most controversial provisions of the proposed patent reform, may already be upon us (some damages experts believe it has been all along).

By now, the reader must have heard of the famous – or infamous, depending on viewpoint – Supreme Court decision in eBay. (eBay, Inc. v. MercExchange, LLC, 547 U.S. 338).

The perceptive reader may have noticed that the economy is in distress (economic term meaning “deep doo doo”). This raises the unpleasant specter of bankruptcies among one’s IP licensees. What happens to an IP license when the licensee becomes bankrupt? More specifically, can the licensee – now technically known as a “debtor-in-possession” – assume the license? The answer to this fascinating question depends on location.

As you probably recall, Q. Todd Dickinson started as deputy in early 1998 and then served as director of the USPTO until January 2001, during a critical juncture in its history. He dealt with Congress as it passed the American Inventors Protection Act of 1999, the last major legislative amendment to the patent law, and managed the PTO as it was reconstituted a Performance-Based Organization of the government. He also initiated planning for agency’s relocation from Crystal City to the Carlisle Campus in Arlington.

The avid blog reader may remember the recent post regarding the seminal (lawyerspeak for “really, really important”) C.A.F.C. decision in Bilski.

Patentees may mark their patented articles with the appropriate patent number so as to give notice to the public that the article is patented (so-called “constructive notice”). In the event the patentee or any licensee fails to so mark (known in the legal profession as a “screw-up”), no damages may be recovered for infringement of the patent unless and until the infringer is given “actual notice” of the infringement; and then only for infringement occurring after receipt of such notice (not surprisingly, filing of suit is itself considered to constitute actual notice).

The first two parts of this trilogy dealt with infringement issues relating to who performs the steps set forth in a method claim and whether one who domestically produces a device contributes to infringement by one using the device abroad. Does infringement occur when the steps of a single method claim are performed by different parties? Does it occur if the method is practiced abroad utilizing equipment exported from this country?

In a decision which defines the limits of the Patent Office’s rule-making authority, the C.A.F.C. largely has sided with the Office. (Tafas et al. v. Durdas) Four rules were at issue: Two of the rules would have placed limitations on the number of continuation applications which an applicant could file. The other two rules would have placed limitations on the number of claims which could be presented in an application.

Everyone knows – or should know – that a party in litigation or contemplating litigation is under a duty to preserve all relevant evidence. One (or more than one) might reasonably question the extent of this duty. Is the duty a negative one (“don’t destroy evidence”) or an affirmative one (“take steps to preserve the evidence”)? Well, the court has just provided some guidance. Phillip M. Adams & Associates LLC v. Lenovo International et al. In that case, the court sanctioned the defendant, even while holding that it may not have intentionally destroyed evidence.