Patent Law Reforms Still Stuck in Congress
In March, the Senate Judiciary Committee released a dozen possible amendments to patent reform legislation awaiting consideration in the Senate. The dispute that developed in April, however, is over the issue of how to assess damages in patent infringement lawsuits, and has stymied forward progress on the bill. It is highly likely that there will be no legislative changes this year.
Federal Circuit Will Decide Business Methods case
The Federal Circuit will decide en banc a case regarding business methods patents which has the potential to change the parameters for such patents. In 1998, the Federal Circuit issued its landmark State Street decision, which held that such patents were valid as long as the process yielded “a useful, concrete, and tangible result.” The State Street decision resulted in an explosion of business-method patent applications, which are often typified by processes that have no tangible physical form or innovative physical steps. The case now before the court appears to be a review of the State Street decision, and may result in a clearer answer regarding whether and what type of physical change or activity is needed to establish patentability. However, there is also a fear that such patents will be curtailed. In re Bilski and Warsaw, 2008 U.S. App. LEXIS 3246 (Fed. Cir. Feb. 15, 2008).
Federal Circuit to Decide Whether Design Patents Require a “Non-trivial Advance”
Last year, the Federal Circuit decided a design patent case by apparently creating a new standard for the point of novelty test, stating that “for a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art.” The Federal Circuit has decided to review the case en banc, to determine the appropriate “point of novelty” test for design patent infringement. Egyptian Goddess, Inc. v. Swisa, Inc., 256 Fed. Appx. 357, 2007 U.S. App. LEXIS 27456 (Fed. Cir. 2007).
Case Imposes New Patent Disclosure Duties
A Federal Circuit decision held that a patent applicant is under a duty to disclose the prosecution history of applications submitted by the same applicant or assignee, even if two related applications are before the same examiner, and another is unrelated, but involves the same technology before a different examiner. The court held that it was inequitable conduct to fail to cite the Office Actions on the related applications to the same examiner, and to the different examiner on the unrelated application. Clearly, patent applicants and their attorneys will need to better disclose all related proceedings. McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007).
Ninth Circuit Requires Courts to Consider More Trademark Infringement Factors
In a recent Ninth Circuit decision, the court reversed the lower court’s finding of no trademark infringement because the lower court based its holding solely on the fact that the marks were “clearly dissimilar,” and thus did not analyze the other trademark infringment factors. Although prior cases have held that courts need not analyze all of the factors, or even most of them, the Ninth Circuit held the analysis of a single factor such as dissimilarity of the marks was insufficient, and courts must analyze “other important factors.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008).
Aggressive Patent Enforcement May Be Sufficient to File Declaratory Relief Action
Where a patentee sent letters suggesting that the alleged infringer should license its patents, and during the next four years sued a number of the alleged infringer’s competitors, issuing press releases and statements in its annual report that it was aggressively pursuing its patent enforcement strategy, the Federal Circuit held that the alleged infringer had grounds to file a declaratory relief action against the patentee. This represents yet another expansion of the ability of an alleged infringer to sue a patentee to obtain a favorable venue for a patent lawsuit. Given that more patentees are rushing to file in the plaintiff friendly Eastern District of Texas, this case gives an alleged infringer one more reason to be able to file first and avoid an unfavorable venue. Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897 (Fed. Cir. 2008).
Peter S. Veregge, Esq.- Newsletter Editor