Post-Quanta, Post-Sale Patentee Controls, 7 J. Marshall Rev. Intell. Prop. L. 682 (2008)

In Quanta Computer, Inc. v. LG Electronics, Inc., the Supreme Court recalibrated the balance between the rights of a patentee to contractually control the post-sale transfer and the use of patented goods. Specifically, the Court extended the doctrine of patent exhaustion to cover the exhaustion of patents not recited in the license, as well as the practice of technology that does not infringe any patent, but which can only be used in a manner by customers that would infringe a patent. While Quanta arose out of facts concerning computer technology, the implications of this decision will be widespread, permeating diverse fields like biotechnology, including the future of the patent-protected seed industry. Above all, Quanta, the latest of several Supreme Court responses to Federal Circuit judicial activism, should serve as warning to the patent community that it is far better to have the Federal Circuit shape the patent law than to have occasional guidance from the Court

Making Sense of KSR and Other Recent Patent Cases

The recent Supreme Court review of KSR International Inc. v. Teleflex Inc., eBay Inc. v. MercExchange LLC, and Microsoft Corp. v. AT&T Corp. manifests the Court’s current interest in the patent jurisprudence of the Fed-eral Circuit. Now it is evident that the Court has a level of concern sufficient to guarantee the possibility of grant of certiorari—whereas formerly a case could rarely generate sufficient interest for review. For long-range impor-tance in patent law, KSR stands alone as the single most important Supreme Court patent decision on the bread and butter standard of “obviousness” in the more than forty years since the 1966 Graham v. John Deere. KSR will remain the leading interpretation of the Graham standard for quite some time

TRIPS Boomerang--Obligations for Domestic Reform

Today, one of the biggest obstacles facing inventors is the problem of patent harmonization. Inventors, who spend their time, money, and resources to develop new technology, are faced with the problem of ensuring that their new development receives patent protection not only in their home countries, but also worldwide. This problem is complicated by the fact that the United States maintains a different patent filing process than most other developed nations. Efforts of the international community to harmonize these different approaches, however, have been only partially successful. In this Article, Professor Wegner examines the latest attempt by the international community to harmonize patent law minimum standards. First, Professor Wegner traces the historical path of harmonization, examining previous efforts at patent harmonization by the European Union and the United Nations Committee of Experts. He then examines the reluctance of the United States to move to a first-to-file patent system. In addition, Professor Wegner examines the requirements of the new Trade-Related Aspects of Intellectual Property Agreement (TRIPS). In support of the TRIPS Agreement, he urges the United States to honor the treaty commitments in this area so that the world can more quickly develop a fair system to deal with the global patent problem

Developments in Patent Law 2004, 4 J. Marshall Rev. Intell. Prop. L. 1 (2004)

There are a great number of patent law doctrines that are currently under reconsideration by the Federal Circuit. These doctrines include patent claim construction under the 2006 Phillips case, the problem of foreign activity being used as patent-defeating prior art as shown in the recent Elsner case, the growing challenge of extraterritorial acts as patent infringement as presented in the 2004 expected cases of Blackberry and Eolas, the “Rule 105” implications for patent office practice in Sta Fruits, the change in willful infringement law set forth in the recent KnorrBremse case, the continuing problem of co-inventorship recurring in Xechem, the search for statutory utility dealt with in the 2005 Fishe case and the ever present possession requirement for utility. This article presents a brief summary of the cases involving these eight doctrines and discusses the potential implications of each on current patent law and practice

The Disclosure Requirements of the 1952 Patent Act: Looking Back and a New Statute for the Next Fifty Years

The 1952 Patent Act was a major event in terms of cutting and pasting together the various patent laws from the previous eighty or so years into the first patent law codification of the twentieth century. The great bulk was a mere codification of principles, going back in some cases to the earliest patent laws of the eighteenth century, that was the work of P. J. Federico.2 Of the three major changes made to the patent law in 1952, each was primarily the work of the late Giles Sutherland Rich,3 with his revision of Section 112 to introduce “means” claiming-perhaps representing the most problematic change in the patent law that still plagues practitioners, now, more than fifty years after the effective date of the new law. The first problem here is the judicial activism from several panel opinions that created a “written description” requirement apart from the original “new matter” proscription. The second major problem is the mistaken inclusion in the 1952 Patent Act of the requirement that the “best mode contemplated” be disclosed. The second portion of this paper deals with the final paragraph of 35 U.S.C. § 112 – originally the third but now the sixth paragraph – that provides for “means” claiming. The final section deals with the United States patent law as part of the global village: what statutory changes make sense for the United States to retain its leadership position in the world patent community? As an appendix, a new statutory scheme to modify the existing model of 35 U.S.C. § 112 is proposed

Making Sense of KSR and Other Recent Patent Cases

The recent Supreme Court review of KSR International Inc. v. Teleflex Inc., eBay Inc. v. MercExchange LLC, and Microsoft Corp. v. AT&T Corp. manifests the Court’s current interest in the patent jurisprudence of the Fed-eral Circuit. Now it is evident that the Court has a level of concern sufficient to guarantee the possibility of grant of certiorari—whereas formerly a case could rarely generate sufficient interest for review. For long-range impor-tance in patent law, KSR stands alone as the single most important Supreme Court patent decision on the bread and butter standard of “obviousness” in the more than forty years since the 1966 Graham v. John Deere. KSR will remain the leading interpretation of the Graham standard for quite some time