Stories I Missed In 2013
Some IP Stories Do Not Have Much “It” Factor. Just like there used to be, and I guess still are, “It Girls” in showbiz and fashion, there are “It Issues” in IP law. I know these decisions/controversies are very important to the parties involved, but I just couldn’t get enthusiastic about these stories. However, since you may wish to investigate them further, I thought I would send out a short list.
1. The legality of Michelle Lee’s appointment as Acting Deputy Director of the PTO (or whatever her title will turn out to be). More interesting would be the story of why Terry Rea was not offered the position (if she even wanted it).
2. What “and/or” means in a patent claim. Although the PTO usually does not object to its use, it is probably better to write something like “at least one of A or B”, or “A or B or a combination thereof”.
3. In case you have not noticed, prosecution history estoppel can limit the scope of a design patent. ‘Nuff said.
4. More allegations that the Fed. Cir. has adopted a rigid and/or exclusive test, this time for finding a case “exceptional.” See Octane Fitness, Kilopass or Lee v. Mike’s Novelties if this is your thing.
5. The effect of Myriad on the patenting of purified “natural products.” This will come out in the wash, but even the ACLU conceded that there might well be a place for such claims, after one Justice suggested that a natural product might not be useful if a patient would have to eat an entire jungle (or was it a tree) to get the benefit of a natural product like taxol or quinine. And I still think that the Bergy decision is precedential.
6. University of Utah v. [Long German Name]. Original jurisdiction question involving “State v. State.”
7. Consumer Watchdog v. WARF. Does a public interest group have standing to appeal an adverse PTO ruling to the Fed. Cir.? Can standing be based on damages that seem like an abstract idea (like hurt feelings)?
8. Organic Seed Growers v Monsanto. Organic farmers argued unsuccessfully that they might be found liable for infringing Monsanto’s patents on GMO’s if their crop became contaminated by wind-borne transgenic seeds. But how would invalidating Monsanto’s patents protect their pristine crops from such events, which seem pretty likely now that transgenic corn and soybeans are ubiquitous? P.S. Cert. was denied on Jan. 13th.
I apologize in advance if this post seems overly dismissive of any of these disputes, but except for the Supreme Court’s grant of cert. petitions in Limelight Networks and Nautilus, it’s been a slow IP news month. Congress appears ready to pep things up with various versions of anti-troll legislation, Cybor may fall and the fate of diagnostic patent claims hangs in the balance (or maybe just hangs), so 2014 could heat up quickly. Stay tuned.