Vol. 1 No. 3 Jan./Feb. 2009:
Litigating Willful Infringement in the Post- Seagate World

Litigating Willful
Infringement in the
Post- Seagate World

By William L. LaFuze and Michael A. Valek

It has been a little more than a year since the United States Court of Appeals for the Federal Circuit changed the playing field for willful patent infringement in its en banc decision in In re Seagate. That decision removed the long-established affirmative duty of care to avoid infringement, substituting in its stead a new legal requirement: the determination of willful infringement now teeters on whether the accused infringer’s actions can be shown to have been objectively reckless. But how has the change to the legal standard affected the way in which willful infringement is litigated? Now that a number of courts have had the opportunity to interpret and apply the objective recklessness standard, the practical effect of the Seagate decision is increasingly evident. Here are some of the high-level observations gleaned from one year of post- Seagate case law.

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The following articles from
Vol.1 No.3 Jan./Feb. 2009
are available to Section members.

In the Wake: The USPTO Guidelines on KSR
By Patrick G. Burns

An obviousness analysis under 35 U.S.C. § 103 has objective and subjective components. Objective evidence of obviousness includes prior art patents, publications, etc., that establish the baseline for making the determination (“hard objective evidence”). It also includes evidence of the level of skill in the relevant art, for example, that is not nearly as focused and is hard to quantify (“soft objective evidence”). The weight given the evidence, and the ultimate conclusion of obviousness or non-obviousness, i.e., whether the claimed invention would have been obvious to one of ordinary skill in the art, is subjective. The interplay between these components has always presented challenges, and it always will. read more...

In re Bilski: 19th Century Thinking for 21st Century Challenges
By Wayne P. Sobon and Erika H. Arner

In a closely watched—and long-awaited—case, a divided Court of Appeals for the Federal Circuit sitting en banc ruled on October 30, 2008, that the only processes that can be patented under 35 U.S.C. § 101 are those that (1) are tied to a particular machine or apparatus or (2) transform a particular article into a different state or thing.1 In declaring this the “definitive test” for patentable processes, the court disregarded the plain language of the statute and rejected substantial Supreme Court precedent cautioning against special, rigid tests for patents. And, although the court’s opinion sought to clarify the standard for process patentability under § 101, recent decisions by the USPTO Board of Patent Appeals and Interferences (BPAI) demonstrate that the “machine-or-transformation” test has provided no more clarity to patent owners and the inventing public, while at the same time, it has called into question the validity of thousands of issued patents. read more...

Making Lemons Out of Lemons: Recent Developments in the Visual Artists Rights Act
By Monica Pa and Christopher J. Robinson

In the Visual Artists Rights Act (VARA), 17 U.S.C. § 106A, Congress amended the Copyright Act to recognize, for the first time, an artist’s moral rights in his or her works of art. VARA’s success, however, has been largely illusory. The Act was an unhappy Solomonic compromise between many conflicting interests, and what resulted was a poorly drafted statute that was exceedingly narrow in scope. Furthermore, many of its intended protections have since been whittled away by the courts. read more...

Davis v. Blige: Turning Copyright Co-Ownership on Its Head
By Christine A. Pepe

The Second Circuit’s controversial Davis v. Blige decision, which issued on October 5, 2007, potentiallyundermines certain longstanding and fundamentalcopyright principles and practices relating to co-ownedworks.1 Traditionally, a copyright co-owner has the right to useor license the work with little interference from other co-owners,having only to account to them for profits. Although itsfull breadth and impact remain uncertain, the decision potentiallylimits a co-owner’s right to unilaterally license, assign,or transfer his or her share in the work. The decision has alsocaused concern for the entertainment and publishing fieldsby setting what seems to be an outright ban on retroactivelicenses and assignments. Notably, retroactive agreements ofthis sort, which serve to authorize a previously unauthorizeduse, are common in these fields and have historically beenupheld by courts, including courts in the Southern District of New York. Given these substantial breaks from establishedpractices, could Davis v. Blige turn copyright co-ownershipon its head? The potential impact is discussed below. read more...

The PRO-IP Act: Another Weapon Against a Failing Economy
By Stephen J. Zralek and Dylan Ruga

On October 3, 2008, the president signed into law the biggest bailout in U.S. history, the Emergency Economic Stabilization Act of 2008. Ten days later, on October 13, 2008, against the backdrop of the worst financial crisis since the Great Depression, President Bush signed the Prioritizing Resources and Organization for Intellectual Property Act of 2008, better known as the PRO-IP Act.2 read more...

GNU and Improved? The Newest Version of the General Public License for Software—What to Tell Your Client
By Terry J. Ilardi

Just when you thought you finally understood version 2 of the GNU General Public License, the so-called “GPLv2,” your clients have begun to ask you about a newer, longer, and more complex GPL. This one is version 3, or “GPLv3,” and it contains different language and perplexing new terms and conditions. Having painfully studied your way through the GPLv2’s cryptic intricacies and having come to an uneasy understanding of its intellectual-property anathematic terms, you can’t help but ask why a new version is needed. The answer, in this case, as in most intellectual property matters, can be found in history and in the inexorable march of technological progress. read more...

Outsource Your IP Legal Work at Your Client’s—and Your—Peril
By Joseph A. Hennessey

Pundits speak as if international borders are increasingly irrelevant in the modern world. Thomas Friedman, in his much-acclaimed book, The World Is Flat, has stated: “Globalization . . . is shrinking the world from a size small to a size tiny and flattening the playing field at the same time. . . . [T]he thing that gives it its unique character is the newfound power for individuals to collaborate and compete globally.” read more...

I2P Group News
By Samson Helfgott

Recent Developments in IP Law
By John C. Gatz

Meeting of the Minds: A Conversation with Tony Figg
By Christopher A. Bullard

The Most from Your Investment?
By Gordon Arnold

New Law to Strengthen IP Enforcement
By Hayden W. Gregory

Annual Review of Intellectual Property Law Developments: 2006-2008

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