Power or Prudence: Which Is It?

In limiting patent litigants’ access to the declaratory judgment remedy, the U.S. Court of Appeals for the Federal Circuit has primarily invoked the “actual controversy” requirement imposed by the U.S. Constitution and the federal Declaratory Judgment Act. However, an examination of Federal Circuit decisions and those of the district courts reveals that the courts have often confused, or blurred the distinction between, constitutional requirements and the discretion the Act affords the federal courts to decline to exercise jurisdiction. Specifically, the courts often attribute constitutional significance to factors that instead bear on policy. It is important to distinguish between jurisdictional limits and policy considerations when deciding justiciability issues in patent cases. Misapplication of the law, or even mere imprecision in the allocation of jurisdictional and prudential considerations, engenders confusion among the affected parties – litigants and potential litigants – who then bear the costs of this confusion in the form of uncertainty, higher litigation expenses, and forgone opportunities. Furthermore, when the courts are attentive to the distinction between the jurisdictional and prudential bases for justiciability decisions, they are more likely to carefully evaluate the policy implications of those determinations. Litigants, in turn, will be motivated to provide courts with more careful analysis. The likely results include the development of better policy and improved judicial decisionmaking

Patent Office Contested Proceedings and the Duty of Candor

The implementation of post-grant trial proceedings in the U.S. Patent and Trademark Office is one of the most significant aspects of the Leahy-Smith America Invents Act. Practitioners have a great deal of new subject matter to master, including the governing statutes and rules, and instructive Patent Trial and Appeal Board decisions. All of this new law is superimposed, however, on an existing legal landscape relating to the practitioner’s duty of candor and potential consequences for candor violations. Furthermore, the new law creates additional candor and disclosure obligations specifically applicable in post-grant contested proceedings.This paper discusses the “old” and “new” candor obligations of practitioners – their sources, their reach and applicability, and the potential consequences for their breach – in the context of the representation of clients in the new USPTO post grant contested proceedings. It identifies several examples of statements and conduct in post-grant proceedings that may particularly implicate the practitioner’s duties of candor and/or disclosure and, accordingly, warrant heightened care on the part of practitioners (registered and unregistered) and parties who participate in the new proceedings

Power or Prudence: Toward a Better Standard for Evaluating Patent Litigants\u27 Access to the Declaratory Judgment Remedy

This Article discusses the Federal Circuit\u27s treatment of the justiciability of declaratory judgment claims in patent cases, in light of the Declaratory Judgment Act and the relevant provisions of the U.S. Consitution

America Invents the Supplemental Examination, But Retains the Duty of Candor: Questions and Implications

This paper considers these duty-of-candor-related issues-issues that the USPTO, the courts, patent owners, and patent challengers may face in the wake of the enactment of the AIA\u27s provisions relating to supplemental examination, But first, by way of background, Part II presents an overview of the legislation relating to supplemental examination and explores how supplemental examination might operate, in light of its apparent goals. Part III considers questions relating to the overlay of supplemental examination on the existing U.S. patent application and enforcement regime, with particular focus on its interplay with the applicant\u27s duty of candor. As that section illustrates, the focal point of that examination is the supplemental examination request. Accordingly, Part III introduces the discussion of the candor-related questions raised by supplemental examination by considering the range and nature of information such requests may contain. Part IV concludes

eBay and the BlackBerry: A Media Coverage Case Study

This paper centers on media coverage relating to eBay and related patent system developments. In particular, it provides a quantitative comparison between media coverage of eBay and that relating to another recent patent case: the litigation between NTP, Inc. and Research in Motion, Ltd. involving the popular BlackBerry® handheld wireless communications device, and examines the extent and nature of the NTP-related coverage in light of the co-pendency of the two cases and the issues they share in common. In so doing, it facilitates consideration of the experience of news coverage consumers - including, presumably, Supreme Court Justices - while eBay was pending at the Court

Development of chemical profiles for U.S. Department of Energy low-level mixed wastes

Chemical and radiological profiles of waste streams from US Department of Energy (DOE) low-level mixed wastes (LLMWs) have been developed by Argonne National Laboratory (ANL) to provide technical support information for evaluating waste management alternatives in the Office of Environmental Management Programmatic Environmental Impact Statement (EM PEIS). The chemical profiles were developed for LLMW generated from both Waste Management (WM) operations and from Environmental Restoration (ER) activities at DOE facilities. Information summarized in the 1994 DOE Mixed Waste Inventory Report (MWIR-2), the Pacific Northwest Laboratory (PNL) Automated Remedial Assessment Methodology (ARAM), and associated PNL supporting data on ER secondary waste streams that will be treated in WM treatment facilities were used as the sources for developing chemical profiles. The methodology for developing the LLMW chemical profiles is discussed, and the chemical profiles developed from data for contact-handled (CH) non-alpha LLMW are presented in this paper. The hazardous chemical composition of remote-handled (RH) LLMW and alpha LLMW follow the chemical profiles developed for CH non-alpha LLMW

Development of radiological profiles for U.S. Department of Energy low-level mixed wastes

Radiological profiles have been developed by Argonne National Laboratory for low-level mixed wastes (LLMWs) that are under the management of the US Department of Energy (DOE). These profiles have been used in the Office of Environmental Management Programmatic Environmental Impact Statement (EM PEIS) to support the analysis of environmental and health risks associated with the various waste management strategies. The radiological characterization of DOE LLMWs is generally inadequate and has made it difficult to develop a site- and waste-stream-dependent radiological profile for LLMWs. On the basis of the operational history of the DOE sites, a simple model was developed to generate site-dependent and waste-stream-independent radiological profiles for LLMWs. This paper briefly discusses the assumptions used in this model and the uncertainties in the results

Information related to low-level mixed waste inventory, characteristics, generation, and facility assessment for treatment, storage, and disposal alternatives considered in the U.S. Department of Energy Waste Management Programmatic Environmental Impact Statement

This report was prepared to support the analysis of risks and costs associated with the proposed treatment of low-level mixed waste (LLMW) under management of the US Department of Energy (DOE). The various waste management alternatives for treatment of LLMW have been defined in the DOE`s Office of Waste Management Programmatic Environmental Impact Statement. This technical memorandum estimates the waste material throughput expected at each proposed LLMW treatment facility and analyzes potential radiological and chemical releases at each DOE site resulting from treatment of these wastes. Models have been developed to generate site-dependent radiological profiles and waste-stream-dependent chemical profiles for these wastes. Current site-dependent inventories and estimates for future generation of LLMW have been obtained from DOE`s 1994 Mixed Waste Inventory Report (MWIR-2). Using treatment procedures developed by the Mixed Waste Treatment Project, the MWIR-2 database was analyzed to provide waste throughput and emission estimates for each of the different waste types assessed in this report. Uncertainties in the estimates at each site are discussed for waste material throughputs and radiological and chemical releases