Vol. 1 No. 5 May./June. 2009:
The Economics of Commercial Success in Pharmaceutical Patent Litigation

The Economics of Commercial Success in Pharmaceutical Patent Litigation
By Rahul Guha, Jian Li, and Andrea L. Scott

A generic drug manufacturer may seek FDA approval by challenging the validity of the patents for a branded drug. An economic analysis can support this challenge by showing extensive marketing, superior distribution, business acumen, and nonpatented features. A patent holder’s economic analysis of the drug’s therapeutic benefits is, therefore, key to successful rebuttal.

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The following articles from
Vol.1 No.5 May./June. 2009
are available to Section members.

The Doctrine of Claim Vitiation: Have the Constraints on Patent Rights Gone Too Far?
By James E. Hanft and Dominic A. Chiarelli

The use of claim vitiation to limit the doctrine of equivalents depreciates the value of patents, raises prosecution costs, and diminishes the likelihood that a patent will be deemed infringed despite the degree of similarity to an accused product. Patent drafters must now scrutinize each word added to a claim for the possibility that it may be construed as a limitation. read more...

Protection of Business Method Patents Outside the United States
By Eugene F. Derényi, Vivien Tzau, Nicholas Zweck, Huw Evans, Ramesh C. Dhawan, Anuj Kulshreshtha, Lena Shen, Kazuhiro Yamaguchi, Indra Bhattacharya, and Wayne McMaster

Patent practitioners in Australia, Canada, China, India, Japan, and the U.K. comment on the level of protection offered in those countries for equivalents to business method patents granted in the United States. read more...

ICANN Can or Can It? Recent Developments in Internet Governance Involving Cybersquatting, Online Infringement, and Registration Practices
By Mark V.B. Partridge and Scott T. Lonardo

Cybersquatting—the bad faith registration of a domain name confusingly similar to a trademark—continues to plague trademark owners. It costs them an estimated $1 billion per year. In the next few months, however, ICANN is expected to take action on this and other important issues affecting the rights of intellectual property owners online. read more...

Bidding for a Copyright Injunction After eBay
By Jacqueline C. Charlesworth and Erin Herlihy

Those seeking permanent injunctive relief in a copyright infringement case in the post-eBay era can be nearly certain of one thing: the eBay four-factor test for injunctive relief will come into play. It is less clear whether or how courts should apply eBay in the context of a motion for a preliminary injunction in copyright cases. read more...

Lines of Defense: An Analytic Framework for the Defense of Copyright Infringement Litigation
By I. Fred Koenigsberg

If war is a metaphor for litigation, the defense of a copyright infringement lawsuit may be likened to the defense of a fortress under siege. Those under attack can erect a series of defenses best conceptualized as a set of concentric rings around the fortress. read more...

Jurisdiction and Remedies for Infringement of Intellectual Property Rights by National and State Governments
By Thomas G. Field Jr.

Exclusive federal jurisdiction may limit the capacity of IP rights holders to seek relief in state judicial or administrative proceedings. The Eleventh Amendment limits relief in federal courts. Nonetheless, sufficient remedies for governmental misuse of intellectual property are usually obtainable despite these restrictions. read more...

How Fair Use Prevailed in the Harry Potter Lexicon Case
By Jonathan Band

J.K. Rowling prevailed against Steven Vander Ark in a copyright infringement lawsuit brought after RDR Books published his Harry Potter Lexicon. The big winner, though, was fair use. Although this author copied too much, his “alphabetized catalogue of elements from the Harry Potter world” was deemed transformative, and the court encouraged the creation of noninfringing reference guides. read more...

I2P Group News
by Samson Helfgott

Recent Developments in IP Law
By John C. Gatz

Meeting of the Minds:
By Theresa V. Casey

Letters to the Editors

From the Hill
by Hayden W. Gregrory

By Gordon Arnold

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