“If Wishes Were Horses” – Roberts’ Dissent from Myriad

Posted on June 29, 2015 by Warren Woessner

After reading Obergefell v. Hodges, 576 U.S.___(2015), (a copy is found at the end of this post) I was struck by Justice Robert’s dissent – which excoriates the majority for legislating from the bench and basing its opinion on “social policy.”

In AMP v. Myriad, Justice Roberts joined in a unanimous opinion holding that segments of DNA are patent-ineligible “natural products,” reversing a Fed. Cir. panel decision that held DNA to be patent-eligible as a novel chemical molecule.

But what if Justice Roberts disagreed with his brethren and penned a dissent? I have repeatedly taken the position that Myriad was decided on policy grounds, which required the Justices to decide that a novel chemical compound is not a “composition of matter” under s. 101, but is something else.

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NEW BOOK REVISITS THE “INSTANT CAMERAS PATENT WAR”

Posted on June 26, 2015 by Warren Woessner

I am not sure that I have ever reviewed a book review before, but Donald Chisum and Janice Mueller  have written a thorough and thoughtful review of Ronald Fierstein’s  book, “A Triumph of Genius” recounting one of the major patent infringement suits of modern times, Polaroid v. Kodak, which encompassed about a decade spanning the late 70’s to the mid-80’s. Polaroid prevailed at the Fed. Cir., in 1986 and put Kodak out of the instant camera business.

My connection to this litigation was peripheral, to say the least, but it was emotionally tangible. Kenyon & Kenyon represented Kodak, and I joined the firm as an associate in 1981. Although I had fine mentoring, there were associates whom I did not meet until months after I started, since they had temporarily taken up residence in Boston, where the “D Mass.” suit was being tried.

Although the loss to Polaroid stunned the IP world, it didn’t slow down Kenyon & Kenyon’s growth–I recall that the senior associates who worked on the case “made partner” — or its ability to attract major litigation, and I was soon sucked into the “Cookie Wars” between Kenyon’s client Nabisco, and Frito-Lay et al. But someone else will have to write that book.

 

 

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Kimble v. Marvel – Supreme Court Sticks With Brulotte Rule

Posted on June 23, 2015 by Warren Woessner

iStock_000030048654_SmallIn a rather breezy opinion filled with Spiderman puns and references, Justice Kagan, writing for a 6/3 Court, affirmed that Brulotte v. Thys Co., 379 U.S. 29 (1964) controlled the outcome of this dispute over Marvel’s decision to halt royalty payments on a web-slinger toy that it had apparently agreed to make “for as long as kids want to imitate Spider-Man (doing whatever a spider can).” Slip op. at 2. (A copy of the opinion is found at the end of this post.)

The toy was patented by Kimble, and the patent expired in 2010. The ninth circuit affirmed the district court’s grant of S.J. confirming that, in accord with Brulotte, a patentee cannot receive royalties for sales made after his/her patent’s expiration. Cert. was granted and the Court affirmed that stare decisis was operable to keep Brulotte as controlling law, particularly since the dispute involved statutory interpretation – [as opposed to, e.g., first amendment rights?] – and that Congress had rejected attempts to amend the law.

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Teva v. Sandoz – “Strange Brew” Boils Over

Posted on June 22, 2015 by Warren Woessner

iStock_000008592211_SmallOn June 18, 2015, a divided Fed. Cir. panel reaffirmed that the key claim of a Teva patent, U.S. Pat. No. 5,800,808, was invalid as indefinite, although the Fed. Cir. had previously been reversed twice by the Supreme Court – once because of lack of deference to the district court’s fact-finding (135 S. Ct. 831) in this suit, and once because the indefiniteness standard applied by the Fed. Cir. in Nautilus v. Biosig was incorrect (134 S. Ct. 2120). (A copy of the decision can be found at the end of this post.)

Commentators have rushed lots of notes on this decision onto the web (Teva Parma. USA v. Sandoz, Inc., Appeal no. 2012-1567 et al. (Fed. Cir., June 18, 2015) – possibly because the central issue was comprehensible without an advanced degree – so I will not spend more time on the history of the decision. The outcome is what matters after all, and I think it can be summed up in one sentence: Deference to a district court’s fact-finding still leaves the Fed. Cir. free to determine if the question of law “indefiniteness” was decided properly. In other words – and there always are – there is no presumption that the ultimate question of law was decided correctly, even if there was no clear error in the lower court’s fact finding.

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