IPLAC Work Product


IPLAC Adopts Resolution to Amend 35 U.S.C. § 101
on Patent Subject Matter Eligibility

April 19, 2018.  Chicago.  The Intellectual Property Law Association of Chicago (IPLAC) has adopted a resolution to amend the statute directed to patent subject matter eligibility.  In doing so, IPLAC joins the IPO, AIPLA, ABA and other bar associations across the country to propose revisions to 35 U.S.C. § 101.

Founded in 1884, IPLAC is the country’s oldest bar association devoted exclusively to intellectual property matters.  Located in Chicago, a principal locus and forum for the nation’s authors, artists, inventors, scholarly pursuits, arts, creativity, research and development, innovation, patenting, and patent litigation, IPLAC is a voluntary bar association of over 1,000 members with interests in the areas of patents, trademarks, copyrights, and trade secrets, and the legal issues they present.  Its members include attorneys in private and corporate practice representing clients before federal courts throughout the United States, as well as the U.S. Patent and Trademark Office and the U.S. Copyright Office.

Having reviewed the USPTO July 2017 report “Patent Eligible Subject Matter: Report on Views and Recommendations from the Public” that summarizes public input to the USPTO October 17, 2016 Federal Register Notice, 81 Fed. Reg. 71485 seeking comments on revisions to 35 U.S.C. § 101, IPLAC believes that the revisions to subject matter eligibility that have been proposed by IPO and AIPLA represent the most straightforward and comprehensive revisions to Section 101.  Based on these two similar proposals, IPLAC recommends a harmonized proposal by adopting language from each.

Between IPLAC, IPO, and AIPLA, these three organizations include over 25,000 members who are involved in the practice of intellectual property law and who represent a wide variety of industries and technologies in the U.S. and abroad.  IPLAC’s proposal seeks to combine the recommendations from IPO and AIPLA into a single proposal that furthers the current dialog regarding possible Section 101 revisions that can address the ambiguity and uncertainty recent Supreme Court precedent has created.

IPLAC’s resolution for amending 35 U.S.C. § 101 is as follows:

RESOLVED, the Intellectual Property Law Association of Chicago (IPLAC), supports, in principle, replacing in its entirety the current statutory language of 35 U.S.C. § 101 with language substantively consistent with the following:

101(a) Eligible Subject Matter: Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.

101(b) Sole Exceptions to Subject Matter Eligibility: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole exists in nature independently of and prior to any human activity, or exists solely in the human mind. In determining eligibility, each claimed invention shall be considered as a whole.

101(c) Sole Eligibility Standard: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to (i) the requirements or conditions of sections 102, 103, and 112 of this Title, (ii) the manner in which the claimed invention was made or discovered, or (iii) the claimed invention’s inventive concept.

A comparison of the resolution’s of IPLAC, IPO, and AIPLA can be found
here on the IPLAC website.

IPLAC’s letter to the USPTO can be found here.

Paul R. Kitch
IPLAC President

 

Submissions to the USPTO

 

As part of the USPTO’s Enhanced Patent Quality Initiative, a Post-Prosecution Pilot (P3) program ran through January 12, 2017 to test the impact on enhancing patent practice during the period subsequent to final rejection and prior to appeal.  Effective features of two programs currently aimed at improving this area of prosecution, (1) the After Final Consideration Pilot (AFCP) 2.0 program and (2) the Pre-Appeal Brief Conference Pilot program, have been incorporated into the P3 program that adds new, requested features, such as providing applicants an opportunity to present arguments to a panel at a conference.   

As part of the pilot nature of the program, the USPTO solicited commentary on the program and proposed rules.  In late 2016, IPLAC’s Patent Committee met to review the proposed rules and submitted comments to the USPTO on the proposed program.  Among other suggestions, IPLAC identified and suggested changes to the rules to fix a possible loophole relating to the timing of a P3 Notice of Decision and the unintended effect it could have on termination of the P3 review.  Please see the attached comments submitted by IPLAC to the USPTO for further detail.  If you have further questions or comments, please contact the Patent Committee chairs: 

Jeffrey A. Chelstrom

Honigman Miller Schwartz & Cohn LLP
1 S. Wacker Drive 28th Floor
Chicago, IL  60606
312-701-9300

JChelstrom@honigman.com

Reid Huefner
Irwin IP LLC

1333 Burr Ridge Pkwy Suite 200
Burr Ridge, IL  60527
630-756-3103
rhuefner@irwinip.com

 

Amicus Brief

 

A principal aim of IPLAC is to aid in the development and administration of the patent, trademark, copyright, trade secret, and associated fields of law and the manner by which they are applied by the courts and by the United States Patent and Trademark Office.

"Among its chief aims are to inform and aid in the development and administration of these laws and to advance and encourage principles designed to maintain the usefulness of these laws insofar as the United States citizenry is concerned. IPLAC also attempts to act as a guide to the practical effects of interpretation of intellectual property laws by various courts and by the United States Patent and Trademark Office." Brief Amicus Curiae of the Intellectual Property Law Association of Chicago in Support of Neither Party, Xu Liu v. Price Waterhouse LLP, No. 02-1213 (U.S. Supreme Court, March 20, 2003)(italics added).

IPLAC founding members declared their original purpose was to include "aiding reforms in the administration of the Patent Office." Letter of IPLAC President Janet Pioli to the USPTO Deputy Chief of Staff on the subject of USPTO satellite offices, January 30, 2102 (italics added).

IPLAC is dedicated to maintaining a high standard of professional ethics in the practice of patent, trademark, copyright, trade secret, and associated fields of law.

I.  Patents, 35 U.S.C. § 101, patent-eligibile subject matter

Bilski v. Doll (Bilski v. Kappos), No. 08-964, Supreme Court

  • Issue: Whether a process can be considered for patent eligibility under 35 U.S.C. § 101 only if the process is tied to a particular machine or apparatus, or transforms a particular article into a different state or thing (“machine-or-transformation” test).
  • Date of Amicus Brief:  August 2009
  • IPLAC Amicus Position: IPLAC does not support either party on the merits of the case, but takes the position that the Federal Circuit’s “machine-or-transformation” test must be rejected as the sole test for determining patent eligibility.
  • Date Court Decided: June 28, 2010
  • Holding: The machine-or-transformation test is not the sole test for determining patent eligibility. Patent-eligible subject matter should be broad. Any bright-line rule should be directed to what is excluded from eligible subject matter, not what is included. Laws of nature, algorithms, and abstract ideas should be excluded.
  • Bilski v. Kappos, 561 U.S. 593 (2010).

 Bilski v. Doll

Mayo Collaborative Servs. v. Prometheus Labs., Inc., No. 10-1150, Supreme Court

  • Issue: Whether “correlations between blood tests results and patients health,” can exist as patentable subject matter.
  • Date of Amicus Brief: November 7, 2011
  • IPLAC Amicus Position: IPLAC believes the Federal Circuit holding should be upheld and urges the Court not to disturb the broad and accessible threshold of statutory subject matter that has fostered innovation and public disclosure over a wide variety of useful arts and in new and emerging fields of technology.  
  • Date Court Decided: March 20, 2012
  • Holding: Processes involved in this test are unpatentable laws of nature. The “steps” Prometheus added to their application are merely instructions to apply the laws of nature. Allowing patents on laws of nature would unnecessarily inhibit further discovery.
  • Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012).

 Mayo v Prometheus

 CLS Bank Int’l v. Alice Corp. Pty, No. 2011-1301, Federal Circuit

  • Issue: Test for patent eligible subject matter for computer-implemented inventions.
  • Date of Amicus Brief: December 4, 2012
  • IPLAC Amicus Position: IPLAC ultimately suggests that only patent claims that do not wholly preempt their subject matter are patentable.
  • Date Court Decided: May 10, 2013
  • Holding: The asserted method and computer-readable media claims are not directed to eligible subject matter. The asserted system claims are not directed to eligible subject matter.
  • CLS Bank Int’l v. Alice Corp. Pty, 717 F.3d 1269 (Fed. Cir. 2013).

 CLS Bank Int'l v. Alice Corp. Pty

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, Supreme Court

  • Issue: Application of 35 U.S.C. § 101 to computer-implemented inventions
  • Date of Amicus Brief: October 7, 2013
  • IPLAC Amicus Position: IPLAC submitted this brief in support of the petition for a writ of certiorari, but not in support of either party on the merits of the case. IPLAC argued the Federal Circuit had not provided clear guidelines for determining whether computer-implemented inventions are patent eligible subject matter.
  • Date Court Decided: December 6, 2013
  • Holding: Cert granted.

 Alice Corp. Pty. Ltd. v. CLS Bank Int 10-07-13

 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, Supreme Court

  • Issue: Application of 35 U.S.C. § 101 to computer-implemented inventions
  • Date of Amicus Brief: January 28, 2014
  • IPLAC Amicus Position: IPLAC submitted this brief in support of neither party on the merits of the case. IPLAC argued that the Court should continue to apply prior precedent regarding patent eligibility under 35 U.S.C. § 101 that exceptions under § 101 must necessarily include laws of nature, natural phenomena and abstract ideas.
  • Date Court Decided: June 19, 2014
  • Holding: Claims regarding computer-implemented inventions are not patent-eligible subject matter. The claims here did no more than require a generic computer to implement this abstract idea by performing generic computer functions, which is not enough to transform an abstract idea into a patent-eligible invention.
  • Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

 Alice v CLS Bank 01_28_14.pdf

Synopsys, Inc. v. Mentor Graphics Corporation, No. 16-1288, Supreme Court

  • Issue: Whether the inquiry under 35 USC § 101 requires courts to ignore the specification or whether courts should ascertain the true scope of the claims in light of the specification and intrinsic record in determining whether they are drawn to a patent-ineligible concept; and whether an otherwise revolutionary technological breakthrough is not an “inventive concept” under the second step of Alice merely because the court believed the breakthrough could theoretically be implemented without a computer.
  • Date of Amicus Brief: May 30, 2017
  • IPLAC Amicus Position: The Court should recognize the courts’ ongoing misinterpretations of post-Alice patent eligibility jurisprudence and provide the appropriate protection to innovators.
  • Date Court Decided: October 2, 2017
  • Holding: Cert denied.

Synopsis v. Mentor Graphics

II.  Patent Infringement

Phillips v AWH Corp., No. 03-1269, -1286, Federal Circuit

  • Issue: Role of dictionary definitions in claim construction
  • Date of Amicus Brief: September 10, 2004
  • IPLAC Amicus Position: IPLAC submits that dictionaries are useful reference works, but they must not supplant the actual evidence of what the inventor objectively presented to and obtained from the Patent and Trademark Office as the metes and bounds of the invention.
  • Date Court Decided: July 12, 2005
  • Holding: Clarified the hierarchy of evidentiary sources usable for claim construction. Most importantly, the words of the claims should be given their ordinary meaning in the context of the patent documents, as interpreted by a person of ordinary skill in the art to which the patent pertains. Other claims and the specification can provided important clues to the intended meaning of the claim language. Prosecution history and other documents in the file are also important, but should be viewed with more skepticism than the plain language of the claims themselves. Extrinsic evidence (like dictionaries) are of secondary importance and may be used, but cannot be given the same weight as the claim language itself.
  • Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).

 Phillips v AWH Corp.

Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., No. 2012-1014, Federal Circuit

  • Issue: Whether factual findings made by a district court in the course of interpreting patent claims should be reviewed under the clearly erroneous standard of review
  • Date of Amicus Brief: May 28, 2013
  • IPLAC Amicus Position: IPLAC supports neither party but believes the factual findings should be review under the clearly erroneous standard of review, but the import of the facts and the ultimate interpretation should be reviewed de novo.
  • Date Court Decided: June 23, 2015
  • Holding: Affirmed the ruling of the district court, as it relied on factual determinations that were not clearly erroneous.
  • Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 790 F.3d 1329 (Fed. Cir. 2015).

 Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.

Maersk Drilling USA, Inc. v. Transocean Offshore Deepwater Drilling, Inc., No. 13-43, Supreme Court

  • Issue: Whether a contract between two U.S. companies for performance in the U.S. may constitute an offer to sell within the meaning of 35 U.S.C. § 271(a).
  • Date of Amicus Brief: August 9, 2013
  • IPLAC Amicus Position: IPLAC supports the petition for writ of certiorari because the Federal Circuit decision extends liability for patent infringement to extra-territorial offers to use a patented product in this country, without actual infringing activities within the U.S., and this extension will have a significant adverse impact on sales and marketing activities world-wide.
  • Date Court Decided: May 21, 2014
  • Holding: Cert dismissed.

 Maersk Drilling USA, Inc. v. Transocean Offshore Deepwater Drilling, Inc.

III.  Patent Validity and Enforceability

KSR Int’l Co. v Teleflex Inc., No. 04-1350, Supreme Court

  • Issue: Whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious,” and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven “teaching, suggestion, or motivation” [TSM] that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.
  • Date of Amicus Brief: October 2006
  • IPLAC Amicus Position: IPLAC supports the requirement of objective evidence of obviousness, including object evidence of TSM.
  • Date Court Decided: April 30, 2007
  • Holding: The Federal Circuit “analyzed the issue in a narrow, rigid manner inconsistent with [Section 103(a)] and our precedents.” The Federal Circuit’s TSM test was not to be applied as a mandatory rule because it was too narrow.
  • KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007).

 KSR Int’l Co. v Teleflex Inc.

Therasense v Becton Dickinson and Co et al, No. 2008-1511, -1512, -1513, -1514, -1595, Federal Circuit

  • Issue: Whether the Federal Circuit test for inequitable conduct is at substantial variance with Supreme Court precedent demands
  • Date of Amicus Brief: August 2, 2010
  • IPLAC Amicus Position: IPLAC believes the Federal Circuit should decide whether the Federal Circuit test for inequitable conduct is at substantial variance with Supreme Court precedents. Specifically, it should consider whether one such precedent demands that even if conduct can be characterized as “perhaps reckless,” but cannot be characterized as a basis for the granting of a patent or essentially material to the grant, the conduct is not to be characterized as inequitable conduct.
  • Date Court Decided: May 25, 2011
  • Holding: The Court raised the standards for proving that the alleged bad act was material to patentability and that the patentee undertook the alleged bad act with intent to deceive the USPTO. The Court also rejected the sliding scale approach. The Court also held that a finding of inequitable conduct should not immediately render a patent unenforceable. Rather, the court must also “weight the equities” to determine whether the inequitable conduct warrants the unenforceability remedy.  
  • Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011).

 Therasense v Becton Dickinson and Co et al

Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, Supreme Court

  • Issue: The appropriate weight to be given in determination of indefiniteness
  • Date of Amicus Brief: March 3, 2014
  • IPLAC Amicus Position: IPLAC believes the appropriate weight to be given to determination of indefiniteness should be that factual findings made by a district court in interpreting patent claims and assessing validity under section 112 should be reviewed under the clearly erroneous standard of review, but that the import of the facts and the ultimate interpretation should be reviewed de novo.
  • Date Court Decided: June 2, 2014
  • Holding: Determining whether a patent claim is sufficiently definite must be done by evaluating the patent with the perspective of an individual learned in the relevant field. A patent is sufficiently definite when the patent taken as a whole (includes patent app, USPTO response, and any amendments) informs those learned in the relevant field of the scope of the invention with reasonable certainty.

 Nautilus, Inc. v. Biosig Instruments, Inc.

Cuozzo Speed Techs., LLC v. Lee, No. 15-446, Supreme Court

  • Issue: PTAB applies a different and broader standard of claim construction than the federal courts.
  • Date of Amicus Brief: November 9, 2015
  • IPLAC Amicus Position: IPLAC supports Petitioners’ request to grant certiorari to clarify that the same standard of claim construction applies regardless of forum.
  • Date Court Decided: January 15, 2016
  • Holding: Cert granted.

 Cuozzo v. Lee 110915

Purdue Pharma v Epic Pharma, No. 2014-1294, -1296, -1306, -1307, -1311, -1312, -1313, -1314, Federal Circuit

  • Issue: Whether the discovery of a previously unknown source of a problem could not be considered as part of the obviousness analysis.
  • Date of Amicus Brief: April 15, 2016
  • IPLAC Amicus Position: IPLAC supports the Appellants’ petition for rehearing en banc to address an improper restriction on the application of Eibel Process.
  • Date Court Decided: May 2016
  • Holding: Petition for rehearing en banc denied.

 Purdue Pharma v Epic Pharma

IV.  Patent Infringement Relief

Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, No. 11-605, Supreme Court

  • Issue: Circuit split in the approach to preliminary injunctions.
  • Date of Amicus Brief: December 19, 2011
  • IPLAC Amicus Position: IPLAC urges the Court to resolve the internal inconsistency in the Federal Circuit’s approach to preliminary injunction – the “vulnerability” standard vs. the four requirements of eBay – and to bring the Federal Circuit in line with the rest of the courts in the United States.
  • Date Court Decided: January 23, 2012
  • Holding: Cert denied.

 Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC

Apple Inc. v. Motorola, Inc., No. 2012-1548, -1549, Federal Circuit

  • Issue: Daubert challenges to patent damages presentations
  • Date of Amicus Brief: December 4, 2012
  • IPLAC Amicus Position: IPLAC does not take a position on whether any of the parties satisfied Daubert standards, but stresses the implications the Court’s decision in the case on the IP community and market in the long term. Ultimately, IPLAC stresses that trends toward more exactness in damages presentations in patent law cases presentations is harmful to the patent law system.
  • Date Court Decided: April 25, 2014
  • Holding: Experts’ testimony regarding damages was admissible.
  • Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014).

 Apple Inc. v. Motorola, Inc.

Octane Fitness, LLC v. ICON Health & Fitness, Inc., No. 12-1184, Supreme Court

  • Issue: Imbalance in parties’ burdens seeking attorney fees (prevailing accused infringer seeking attorney fees must show subjective bad faith on the part of the patentee, however this showing is not required of the prevailing patentee).
  • Date of Amicus Brief: December 9, 2013
  • IPLAC Amicus Position: IPLAC requests the Court provide a consistent and party-neutral standard for applying section 285 to provide guidance to parties to patent litigation where there has been neither inequitable conduct nor litigation misconduct.
  • Date Court Decided: April 29, 2014
  • Holding: Appellate Court construed the attorney fees statute in a manner that was unduly rigid. Section 285 imposed only one constraint on district courts’ discretion to award attorney’s fees in patent litigation: the power was reserved for “exceptional” cases. An “exceptional” case under the statute is simply one that stands out from others because of its frivolous nature. District courts may determine exceptionalness by considering the totality of the circumstances on a case-by-case basis. Appellate court standard to determine whether granting attorneys fees is a simple discretionary inquiry and not “clear and convincing” standard.
  • Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).

 Octane Fitness, LLC v. ICON Health & Fitness, Inc.

Kimble v. Marvel Entm’t, LLC, No. 13-720, Supreme Court

  • Issue: Whether Brulotte bars post-expiration royalties in patent licenses that supported by sound economic analysis and do not run afoul of the antitrust law of the United States.
  • Date of Amicus Brief: February 4, 2015
  • IPLAC Amicus Position: IPLAC supports that the per se rule of Brulotte v. Thys Co. should be overruled (post-expiration royalties in patent licenses were unlawful).
  • Date Court Decided: June 22, 2015
  • Holding: The precedent established in Brulotte, that a patentee cannot receive royalty payments after the patent has expired, should be upheld.
  • Kimble v. Marvel Entm’t, LLC, 135 S. Ct. 2401 (2015).

 Kimble v. Marvel Entm’t, LLC

SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, No. 15-927, Supreme Court

  • Issue: Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 U.S.C. § 286.
  • Date of Amicus Brief: July 20, 2016
  • IPLAC Amicus Position: Laches should be available in patent cases within the 6 year damages limitation period.
  • Date Court Decided: March 21, 2017
  • Holding: Laches cannot be invoked as a defense against a claim for damages brought within the six-year limitations period of Section 286 of the Patent Act.
  • SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017).

 SCA Hygeniene Prods. Aktiebolag v. First Quality Prods., LLC

 WesternGeco LLC v. Ion Geophysical Corp., No. 16-1011, Supreme Court

  • Issue: Whether lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f).
  • Date of Amicus Brief: March 2, 2018
  • IPLAC Amicus Position: Lost profits should be recoverable for patent infringement found under 35 U.S.C. § 271(f), irrespective of where those damages are determined to have arisen or occurred.

 WesternGeco v. Ion

V.  Patent/Antitrust

Ill. Tool Works Inc. v. Indep. Ink, Inc., No. 04-1329, Supreme Court

  • Issue: Elimination of the need for economic analysis of the markets for the tying product and the tied product.
  • Date of Amicus Brief: July 2005
  • IPLAC Amicus Position: IPLAC supports Illinois Tool Works, Inc. in its petition stating the elimination of the market analysis in the Court in incorrect.
  • Date Court Decided: March 1, 2006
  • Holding: In all cases involving a typing arrangement, the plaintiff must prove the defendant has market power in the tying product. Mere fact that a tying product is patented does not support presumption of market power.
  • Ill. Tool Works Inc. v. Indep. Ink, Inc., 126 S. Ct. 1281 (2006).

 Ill. Tool Works Inc. v. Indep. Ink, Inc..

VI.  Post-Grant Proceedings

Cuozzo Speed Techs., LLC v. Lee, No. 15-446, Supreme Court

  • Issue: PTAB applies a different and broader standard of claim construction than the federal courts.
  • Date of Amicus Brief: March 7, 2016
  • IPLAC Amicus Position: The same standard should apply to claim construction regardless of forum.
  • Date Court Decided: June 20, 2016
  • Holding: PTAB may apply the broadest reasonable interpretation of patent claims during inter partes review proceeding, and such proceeding is not judicially reviewable.
  • Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016).

 Cuozzo v Lee 030716

Oil States Energy Services, LLC v. Greene’s Energy Group, No. 16-712, Supreme Court

  • Issue: Whether inter partes review violates the Constitution by depriving patent holders of their property rights without providing them a jury and an Article III forum
  • Date of Amicus Brief: August 31, 2017
  • IPLAC Amicus Position: The patent in this case issued 11 years before effective date of IPR legislation, so the case should be constrained to deciding whether IPR statute can be constitutionally applied in a retroactive manner to affect pre-existing patent rights. This case should not address the constitutionality of IPR legislation as related to post-AIA patents.
  • Date Court Decided: pending
  • Holding: pending

 Oil States Energy Services LLC v. Greene's Energy Group, LLC

VII.  Procedures

Robert Bosch, LLC v. Pylon Mfg. Corp., No. 2011-1363, - 1364, Federal Circuit

  • Issue: “Bifurcated appeals” (appeals of liability issues before there are judgements on damages and willfulness in patent cases) are permitted by 28 U.S.C § 1292(c)(2).
  • Date of Amicus Brief: October 11, 2012
  • IPLAC Amicus Position: IPLAC does not take a position on the issue in the case, but suggests the Court should be aware that damages law in patent cases is trending to more exactness in damages presentation expenses, and if the law were to change, litigants and districts courts would likely seek bifurcated appeals by other means.
  • Date Court Decided: June 14, 2013
  • Holding: 28 U.S.C § 1292(c)(2) does confer jurisdiction on this court to entertain appeals when a trial on damages has not occurred and willfulness issues were outstanding.
  • Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305 (Fed. Cir. 2013).

 Robert Bosch, LLC v. Pylon Mfg. Corp.

Magnetek, Inc. v. Kirkland & Ellis, LLP, No. 112910, Supreme Court of Illinois

  • Issue: Jurisdiction of state courts to hear patent law matters in the context of malpractice.
  • IPLAC Amicus Position: IPLAC supports the petition of Kirkland & Ellis LLP for leave to appeal the decision of the Supreme Court of Illinois.
  • Date Court Decided: November 30, 2011
  • Holding: Petition for leave to appeal allowed.

 Magnetek, Inc. v. Kirkland & Ellis, LLP

Gunn v. Minton, No. 11-1118, Supreme Court

  • Issue: State courts’ jurisdiction over claims of malpractice in the conduct of patent litigation.
  • IPLAC Amicus Position: IPLAC believes that the exercise of subject matter jurisdiction over state malpractice claims involving substantial issues of patent law is most consistent with the Court’s jurisprudence and with congressional intent for the exercise of jurisdiction under 28 U.S.C. § 1338(a).
  • Date Court Decided: February 20, 2013
  • Holding: Federal courts do not have exclusive jurisdiction in any case that involves patent law. A case only arises under federal patent law when it necessarily raises a stated federal issue. A hypothetical patent case is not substantial enough to deprive the state court of jurisdiction. A state court decision in a state law malpractice case relating to patent law will not substantially affect federal patent law.
  • Gunn v. Minton, 133 S. Ct. 1059 (2013).

 Gunn v Minton

 TC Heartland LLC v. Kraft Foods Grp. Brands, LLC, No. 16-341, Supreme Court

  • Issue: Whether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions.
  • Date of Amicus Brief: February 6, 2017
  • IPLAC Amicus Position: IPLAC urges the Court that 28 U.S.C § 1400(b) is indeed the sole and exclusive provision governing venue in patent infringement actions.
  • Date Court Decided: May 22, 2017
  • Holding: The subsection of the general venue statute that allows a corporation to reside in many jurisdictions for the purpose of establishing jurisdiction does not apply to the patent venue statute. Although the general venue statute has been amended, Congress has not amended the patent venue statute since its interpretation in Fourco and the amendments to the general venue statute did not explicitly apply to patent venue.
  • TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017).

 TC Heartland LLC v. Kraft Foods Grp. Brands, LLC

NantKwest, Inc. v. Matal, No. 2016-1794, Federal Circuit

  • Issue: Did the panel correctly determine that 35 U.S.C. § 145’s “[a]ll the expenses of the proceedings” provision authorizes an award of the USPTO’s attorneys’ fees?
  • Date of Amicus Brief: January 23, 2018
  • IPLAC Amicus Position: The en banc panel should first reaffirm that the American Rule applies to § 145’s analysis, and, second, correctly find that the phrase “all expenses of the proceedings” is not sufficiently clear and explicit to authorize fee-shifting.
  • Date Court Decided: Pending
  • Holding: Pending

 NantKwest, Inc. v. Matal

VIII.  Copyright

Kelley v. Chi. Park Dist., No. 11-101, Supreme Court

  • Issue: Whether copyright may exist on living works made by man
  • Date of Amicus Brief: August 24, 2011
  • IPLAC Amicus Position: IPLAC supports the petition for writ of certiorari, and ultimately that original works of art that incorporate life forms and have an admitted creative spark, should be subject to copyright.
  • Date Court Decided: October 3, 2011
  • Holding: Cert denied.

 Kelley v. Chi. Park Dist.

Star Athletica, LLC v. Varsity Brands, Inc., No. 15-866, Supreme Court

  • Issue: What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?
  • Date of Amicus Brief: July 22, 2016
  • IPLAC Amicus Position: IPLAC supports Petitioner’s argument that the same standard test should determine when a feature of a useful article is protectable under § 101 of the Copyright Act.
  • Date Court Decided: March 22, 2017
  • Holding: A feature incorporated into the design of a useful article is eligible for copyright protection under the Copyright Act only if the feature (1) can be perceived as a two- or three- dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic or sculptural work – either on its own or fixed in some other tangible medium or expression – if it were imagined separately from the useful article into which it is incorporated; that test is satisfied here.
  • Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).

 Star Athletica, LLC v. Varsity Brands, Inc.

IX.  Trademark

B&B Hardware, Inc. v. Hargis Indus., No. 13-352, Supreme Court

  • Issue: Seventh Amendment right to a jury in TTAB cases.
  • Date of Amicus Brief: September 10, 2014
  • IPLAC Amicus Position: IPLAC does not support either party on the merits of the case, but takes the position that fact-finding by the TTAB that would bind parties against jury trials over wholly common-law rights would implicate the Seventh Amendment and that binding parties in such litigations to TTAB decisions would violate the Seventh Amendment, unless the right to trial by jury were to be waived.
  • Date Court Decided: March 24, 2015
  • Holding: The Seventh Amendment does not strip competent tribunals of the power to issue judgments with preclusive effect. So, a finding by the TTAB can preclude re-litigation in federal courts.
  • B&B Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293 (2015).

 B&B Hardware, Inc. v. Hargis Indus.

Shammas v. Hirshfeld, No. 15-563, Supreme Court

  • Issue: Proper meaning of the term “expenses” as used in 15 U.S.C. § 1071
  • Date of Amicus Brief: November 30, 2015
  • IPLAC Amicus Position: IPLAC supports the petition for writ of certiorari and believes the Court should reject any definition of “expenses” that includes government attorney and paralegal salaries and other attorney fees.
  • Date Court Decided: March 7, 2016
  • Holding: Cert denied.

 Shammas v Hirshfeld

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