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Intellectual Property Quarterly Newsletter - Winter 2010

11 Jan 2010

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In this issue:


Note from the Editors

This issue of the IP Quarterly Newsletter explores several areas of patent law, including one that intersects with antitrust issues and another that involves employment issues.  This winter issue covers four topics:

  • The effects Princo v. ITC may have on patent and antitrust law involving patent pools
  • Fresh analysis about the Eastern District of Texas:  the Federal Circuit’s latest transfer decisions
  • An examination of Stanford v. Roche and a discussion about employment agreements and patent ownership issues
  • A thorough analysis of the PTO’s crackdown on filing informalities in reexaminations

We hope you find the articles interesting and helpful to you and your company.


Risks of Agreeing Not to License a Pooled Patent
By Cynthia Lopez Beverage

Patent owners that participate in a patent pool should pay close attention to an en banc hearing that will take place in Princo Corporation v. International Trade Commission in 2010.  At present, the parties, the NYIPLA, and the AIPLA are preparing briefs on patent misuse issues that the Federal Circuit specifically identified in its October 13, 2009 order granting en banc review.  In this case, the Federal Circuit may decide whether it is patent misuse for patent owners to agree among themselves not to license a pooled patent for a potentially competing technology outside of the pool.

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Federal Circuit’s Transfer Decisions Forcing Plaintiffs to Re-evaluate Their Eastern District of Texas Strategy
By Jason A. Crotty and J. Manena Bishop

In re Hoffman-La Roche Inc. and In re Nintendo Co., Ltd. are the latest in a series of Federal Circuit decisions that have shifted the legal landscape regarding patent venue —turning the tide in favor of defendants seeking to transfer cases out of the Eastern District of Texas.  Indeed, it appears that a plaintiff’s chances of successfully opposing a transfer motion out of the Eastern District of Texas are lower than ever before. 

In recent years, the Eastern District of Texas developed a reputation for being a desirable forum for plaintiffs, attracting numerous patent owners and making the district a hotbed for patent litigation.  Moreover, because motions to transfer appeared to be routinely denied, defendants found themselves required to litigate in the Eastern District of Texas, even when virtually no connection existed between the dispute and the venue.

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Who Owns Your New Employee’s Patents?
By David C. Hoffman and David J. Murphy

The recent decision by the Federal Circuit in Stanford University v. Roche emphasizes how important it is for employers and their counsel to use precise language when drafting clauses governing an employee’s obligation to assign inventions to his or her employer.  Stanford University was unable to establish ownership of patents covering inventions developed by an employee even though the employee had signed an agreement containing terms which many would consider more than adequate to protect Stanford’s interests in the inventions.  The Stanford case demonstrates how the wrong choice of contractual language can have important and costly consequences, including the loss of valuable patent rights.  In this article, we offer some suggestions to help companies and their counsel avoid similar outcomes by carefully managing their employees’ activities with third parties and by carefully drafting assignment provisions in employment agreements.

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Reexam Interrupted: The PTO Cracks Down on Filing Informalities
By Robert A. Saltzberg, Kaare D. Larson, and Yan Leychkis

In recent months, patent reexamination practitioners have spotted an alarming trend.  Increasingly, the PTO has refused to grant filing dates to reexamination requests due to alleged noncompliance with filing formalities.  That is, the requests are “bounced” for failing to pass an initial, formal hurdle before any review on the merits. 

A recent review of PTO reexamination records has revealed that approximately 60% of ex parte requests filed in the third quarter of 2009 were not granted their original filing date, compared with 27%-38% in the preceding three quarters.  The sharp rise in the number of noncompliant requests may stem from the PTO’s struggle to keep up with the robust growth of new reexamination filings

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Intellectual Property Practice News

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