Gibbons Law Alert
Robert E. Rudnick, a Director in the Gibbons Intellectual Property Department, will be speaking at the Annual Joint Patent Practice Seminar on April 17, 2012, at the New York Marriott Marquis on the Federal Circuit’s decision in General Protecht Group, Inc. v. Leviton Mfg. Co., Inc. The case involved a forum selection clause in a patent settlement agreement.
In succession to remarks he made this past Fall about the soaring costs of electronic discovery in IP cases and unveiling the Model Order Regarding E-Discovery in Patent Cases, Federal Circuit Chief Judge Randall Rader recently told the ABA Section of IP Law that both the bar and the bench together, must continue to rein in the high costs of e-discovery. Chief Judge Rader suggested that attorneys’ need to limit their e-discovery requests and courts should consider implementing rules to facilitate efficient and cost effective discovery, as many have begun to do.
Gibbons is proud to once again sponsor lunch at the Rutgers Business School’s Blanche and Irwin Lerner Center for Pharmaceutical Management Studies Program on Thursday, April 26, and Friday, April 27, at Rutgers Business School – Newark, One Washington Park, Room 1027, 10th Floor.
The Federal Circuit recently demonstrated how active the Court is, and will continue to be. After having ruled in Zoltek III that the United States did not waive immunity from suit except for acts that would constitute direct infringement under 35 U.S.C. § 271(a), the Court voted sua sponte to reconsider the question en banc.
In a much anticipated decision, a unanimous Supreme Court today reversed the ruling of the Federal Circuit Court of Appeals, and held that Prometheus’ process is not patent eligible. Mayo Collaborative Servs. v. Prometheus Labs., Inc., No. 2008-1403, slip. op. (Fed. Cir. Dec. 17, 2010), rev’d, 566 U.S. __ (2012). Mayo purchased and used medical diagnostic tests based on Prometheus Labs’ patents, but later sold and marketed its own diagnostic test. Prometheus Labs brought suit, asserting that Mayo’s test kits infringed its patents.
As President-Elect of the New Jersey Intellectual Property Law Association (NJIPLA), I am happy to announce that the NJIPLA will again host its well-received and well-attended “Annual Patent Litigation” seminar on Wednesday, March 14, 2012 at the Woodbridge Hilton. This seminar is a half-day program starting at 11:45 am, and includes a meet and greet lunch. CLE credits for NJ (5.0) and NY/PA (4.5) will be awarded. The Woodbridge Hilton is easily accessible by car and a short walk from the Iselin train station, providing convenience for New York City and Philadelphia area attendees.
In AstraZeneca Pharms. LP. v. Apotex Corp., the Federal Circuit ruled that an Abbreviated New Drug Application (“ANDA”), filed under § 355(j)(2)(B)(ii) and limited to FDA approved, but unpatented uses of a medication, is not an act of infringement of Orange Book-listed patents covering approved but different uses of the same medication. The Court did find that Plaintiff’s allegation that its listed patents are infringed was sufficient to establish subject matter jurisdiction over the generic Defendants.
2011 was a significant year for the “atomic bomb” of patent defenses, inequitable conduct. Inequitable conduct is a defense to patent infringement that potentially renders a patent, and its family, unenforceable when a patent applicant breaches its duty of candor and good faith to the USPTO. Two traditional hurdles for succeeding on an inequitable conduct defense were showing that withheld information or falsely disclosed information was material and the patent applicant intended to deceive the USPTO.
In a recent order, a judge in the United States District Court for the Central District of California held that the defendants were misjoined because even though “some of the products incorporate the same wireless technology [it] does not alter the fact that Plaintiff brings suit against unrelated defendants for independent acts of infringement.” One-E-Way Inc. v. Plantronics Inc. et al, 2:11-cv-06673, at 2 (CD Cal. January 19, 2012).
In 2006, the Chinese government pledged to foster future innovation in China by promoting science and technology development in key fields and enhancing innovation capacity. In the National Medium- and Long-Term Plan for Science and Technology Development (2006-2020) published by the State Council, China pledged that by 2020 research and development (“R&D”) investment will exceed 2.5% of China’s total GDP, and that progress of science and technology will contribute at least 60 percent to the country’s development.