The America Invents Act
Key components of the patent reform law
When President Obama signed the Leahy-Smith America Invents Act (AIA) last fall, it marked the culmination of a years-long reform process. This article discusses several key components of the law that will significantly affect the patent prosecution and review processes. Specifically, it shows how the AIA shifts the U.S. patent system from a first-to-invent priority scheme to a first-inventor-to-file scheme and implements entirely new procedures for challenges to the validity of an issued patent. A sidebar explains why patent ownership could get more expensive.

Transaction denied
Federal Circuit addresses software patentability
The patentability of software applications is by no means certain. This article looks at a recent decision handed down by the U.S. Court of Appeals for the Federal Circuit. The court’s ruling addresses the role and application of the so-called machine-or-transformation test for the patentability of method claims. In so doing, it took into account a Supreme Court ruling that the machine-or-transformation test isn’t the exclusive check for patentability of claims.
CyberSource Corporation v. Retail Decisions, Inc., No. 2009-1358, Aug. 16, 2011 (Fed. Cir.)
Bilski v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)

Court shelves first-sale doctrine for foreign-made works
It’s well-settled law that the owner of a lawfully purchased copyrighted work is generally free to resell that copy of the work without restriction. But what if the work was made overseas? This article discusses a U.S. Court of Appeals ruling holding that foreign-made works can’t be so freely resold. This potentially far-reaching ruling could restrict resale of a wide range of products produced abroad. But the court acknowledged a tension between two different sections of the Copyright Act, which could ultimately lead to a review by the U.S. Supreme Court.
John Wiley & Sons, Inc. v. Kirtsaeng, No. 09-4896, Aug. 15, 2011 (2nd Cir.)
Omega S.A. v. Costco Wholesale, Nos. 07-55368, 07-56206, Sept. 3, 2008 (9th Cir.)

Using survey results in false advertising claims
False advertising lawsuits often rely on consumer survey evidence to show that advertising claims are misleading. So it wasn’t surprising that one liquor company used a consumer survey to claim that a competitor’s “Havana ClubTM” rum misled consumers into believing that the rum was made in Cuba, even though the label specifically identified Puerto Rico as the source. But this article shows that, in this case, a survey wasn’t enough.
Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., No. 10-2354, Aug. 4, 2011 (3rd Cir.)

Turning a blind eye backfires
Supreme Court addresses induced patent infringement

Bilski et al v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)

Standard raised for “inequitable conduct” defense
during patent prosecution. This article examines the court’s ruling.
Therasense, Inc. v. Becton, Dickinson and Co., Nos. 2008-1511, -1512, -1513, -1514, -1595, May 25, 2011 (Fed. Cir.)

When trademark and patent injunction standards collide
Voice of the Arab World, Inc. v. MDTV Medical News Now, No. 10-1396, June 8, 2011 (1st Cir.)
eBay Inc. v. MercExchange, L.L.C., No. 05-130, May 15, 2006 (Supreme Court)
Amoco Production Company v. Village of Gambell, No. 85-1239, March 24, 1987 (Supreme Court)

You invent it, you own it
Supreme Court addresses federally funded inventions
Bd. of Trustees v. Roche Molecular Sys., Inc., No. 09-1159, June 6, 2011 (Supreme Court)

Are you hiding something?
Failure to share key information could invalidate a patent
Wellman, Inc. v. Eastman Chemical Co., No. 2010-1249, April 29, 2011 (Fed Cir.)

DuPont factors weigh heavily in banking dispute
Citigroup Inc. v. Capital City Bank Group, Inc., No. 2010-1369, March 28, 2011 (Fed. Cir.)

Playing the Internet domain name game
Newport News Holdings Corp. v. Virtual City Vision, No. 09-1947, April 18, 2011 (4th Cir.)

Better get used to it
Court addresses patent infringement of an information system

Levi Strauss v. Abercrombie & Fitch, No. 09-16322, Feb. 8, 2011 (9th Cir.), Thane International, Inc. v. Trek Bicycle Corp., Nos. 00-55293, 00-55599, Sept. 6, 2002 (9th Cir.)

Getting particular with false marking claims
In re BP Lubricants USA Inc., Misc. Docket No. 960, March 15, 2011 (Fed. Cir.)

You call that art?
Flower display doesn’t make the cut for copyright protection
Kelley v. Chicago Park District, Nos. 08-3701, 08-3712, Feb. 15, 2011 (7th Cir.)

Losing control                
Ninth Circuit examines distribution’s role in copyright case
UMG Recordings, Inc. v. Augusto, No. 08-55998, Jan. 4, 2011 (9th Cir.)

Eek! “Naked licensing” leads to lost trademarks
Freecycle Sunnyvale v. The Freecycle Network, No. 08-16382, Nov. 24, 2010 (9th Cir.)

Facts > rules
Federal Circuit rejects familiar formula for patent damages
Uniloc USA Inc. v. Microsoft Corp., 2010-1035, Jan. 4, 2011 (Fed. Cir.)

Can a patentee establish liability for joint infringement?
Akamai Technologies, Inc. v. Limelight Networks, Inc., 09-1372, Dec. 20, 2010 (Fed Cir.)

A view to a trademark
Gun manufacturer turns to 007 for help
In re Carl Walther GmbH, No. 77096523, Oct. 26, 2010 (T.T.A.B.)

Generic drug draws preliminary injunction
AstraZeneca LP v. Apotex, Inc., Nos. 2009-1381, 2009-1424, Nov. 1, 2010 (Fed. Cir.)

Conception vs. copying: A patent case
Solvay S.A. v. Honeywell Int’l, Inc., 2009-1161, Oct. 13, 2010 (Fed. Cir.)

Any given Sunday
Fourth Circuit makes the call on fair use
Bouchat v. Baltimore Ravens Limited Partnership, No. 08-2381, Sept. 2, 2010 (4th Cir.)

Patentability after Bilski
USPTO issues interim guidance on process claims

Stauffer v. Brooks Bros., Inc., Nos. 2009-1428, 2009-1430, 2009-1453, August 31, 2010 (Fed. Cir.)

When patent > trademark
Jay Franco & Sons, Inc. v. Franek, No. 09-2155, August 11, 2010 (7th Cir.)