Intellectual Property Quarterly Newsletter, Spring 2008
In this issue:
Note from the Editors
In this issue of Morrison & Foerster’s Intellectual Property Quarterly Newsletter, we focus on important issues related to
innovation by “clean and green-tech” companies. We discuss what clean and green-tech companies can do to protect their technology,
and how they can use their IP to attract and maximize investment dollars. A companion article discusses rapid advances in
biofuels and strategies for protecting biofuel feedstock inventions.
We also address two interesting legal issues that arise in a world where innovation occurs rapidly and where information is
often disseminated via the internet. We discuss some benefits of pursuing “utility model” protection rather than patent protection,
and we analyze a recent Federal Circuit decision that assessed whether a paper posted on an FTP server constitutes a “printed
publication” for prior art purposes.
We also provide our recurring features, the eBay Scorecard and news and Notes on Patent Reexaminations. In the Reexamination
article, we examine two recent Federal Circuit decisions that address contradictory validity determinations by a district
court and the PTO.
We hope you find Morrison & Foerster’s Intellectual Property Quarterly Newsletter useful in following recent developments
in intellectual property law.
Maximizing Patent Opportunities and Funding in Clean and Green-Tech Start-ups
One of the cornerstones in building a viable new business is the technology and protection of rights to the entity’s intellectual
creations. What do investors in clean and green technologies want to know about intellectual property issues, and what can
an entrepreneur in this field do to maximize valuation?
Click here to read the full text of this article.
Protecting Inventions Involving Biofuel Feedstock
In the near future, biofuel feedstock patents have the potential to dominate the biofuel patent landscape by covering the
most cost-effective means of production. Going forward, expensive pretreatment processes will be eliminated by backing pretreatment
technology upstream into feedstock plants. As more and more cost-saving technology is engineered into the already price-significant
feedstock, the economics of biofuel production will crown feedstock patent portfolios as some of the most valuable in the
biofuel patent landscape.
Click here to read the full text of this article.
Reexamination v. Litigation: Which Controls?
The Translogic cases suggest an answer to the question: “What happens to a judgment of infringement when the claims are later rejected in
reexamination?” The cases — which are not yet over — appear to show that a finding of invalidity in the Patent Office can
trump a validity finding and an infringement judgment from a district court. These proceedings provide a rare window into
the interplay between judicial and administrative approaches to patents and claim construction. They also raise questions
about the nature of appellate review, and how the patent system interacts with the Constitutional requirements of the Seventh
Amendment reexamination clause and the Article II Appointments clause. The timeline of procedural events — although complicated, illustrates the significant substantive issues.
Click here to read the full text of this article.
Utility Models – A Useful Alternative to Patents
In many countries the time required to secure patent protection often exceeds two years. By the time a patent issues, the
protected technology may be obsolete and the marketplace may have moved on to a new and different technology. Fortunately,
several countries provide a quick and effective solution to this problem in the form of “utility model” protection, enabling
IP owners to secure protection in a matter of months rather than years.
Click here to read the full text of this article.
eBay Scorecard
We began tracking application of the eBay decision in the Spring 2007 inaugural edition of our Intellectual Property Quarterly Newsletter, and this fourth installment
of the “eBay Scorecard” is current through December 31, 2007. It was a slow quarter for application of the eBay framework; courts considered the issue just four times in published decisions, and granted injunctions in all four cases.
|
|
Plaintiff Practices Invention?
|
Infringing Use Limited to Minor Component?
|
Injunction Would Cause Public Harm?
|
|
|
Y
|
N
|
Y
|
N
|
Y
|
N
|
|
Total
(Oct. 1, 2007 through Dec. 31, 2007)
|
|
|
|
|
|
|
|
Injunctions Granted (4)
|
2
|
0
|
0
|
1
|
0
|
3
|
|
Injunctions Denied (0)
|
0
|
0
|
0
|
0
|
0
|
1
|
|
|
|
|
|
|
|
|
|
Cumulative Total
(May 15, 2006 through Dec. 31, 2008)
|
|
|
|
|
|
|
|
Injunctions Granted (30)
|
19
|
1
|
0
|
5
|
0
|
20
|
|
Injunctions Denied (8)
|
1
|
5
|
2
|
2
|
4
|
1
|
Printed Publications in the Computer Age: The Federal Circuit Addresses FTP Servers in SRI
In SRI International, Inc. v. Internet Security Systems, Inc., 511 F.3d 1186 (Fed. Cir. Jan 8, 2008), the Federal Circuit recently reviewed its previous case law on the printed publication
requirement of 35 U.S.C. § 102(b). The SRI decision indicates that making an otherwise relevant prior art reference openly accessible to individuals via the Internet
does not necessarily qualify the reference as a printed publication. This holding is notable because it suggests that intent may now be a factor in determining whether a publication is publicly accessible, while providing pointed commentary from
the Federal Circuit on its own printed publication precedent.
Click here to read the full text of this article.
IP Practice News
Awards and Accolades:
- In January, we were named one of only three finalists in the IP category for 2007’s Litigation Department of the Year by The American Lawyer. This bi-annual feature is the most widely recognized ranking of litigation departments at major law firms in the United
States. The department as a whole received “Honorable Mention” in this prestigious annual assessment.
- Rachel Krevans, was named one of the California Lawyer Attorneys of the Year ("CLAY") by California Lawyer magazine in February 2008, receiving the only award given in the IP category.
- Ms. Krevans also is featured on the cover of the March edition of the The American Lawyer. The cover story is on patent litigation in the Eastern District of Texas, and features Morrison & Foerster’s watershed
defense jury verdict in Forgent v. Echostar.
- Louise Stoupe, a partner in our Tokyo office, has been designated a finalist in the IP Law & Business “Top IP People Under 45” survey.
- The American Intellectual Property Law Association ("AIPLA") elected Jim Pooley as President of the 17,000-member group. The AIPLA is the largest voluntary association of IP lawyers in the United States.
From the Docket
Intercontinental Trade Secrets
Case Catches Attention
(Applied Materials v. Advanced Micro-Fabrication Equipment)
As reported in IP Law 360 and Salon.com last October, Applied Materials filed this suit for misappropriation of trade secrets among other causes of action, against
Shanghai-based start-up and Morrison & Foerster client, AMEC. The case alleges that certain former employees of Applied Materials misappropriated trade secrets when they formed AMEC
upon returning to China. AMEC is a newcomer to the semiconductor equipment space, and its first products use plasma etching
and chemical vapor deposition to build chips — a market presently dominated by Applied. Recently, the firm twice successfully defended against Applied’s motions for emergency
orders seeking expedited discovery. The defense team on this matter consists of Harold McElhinny, Marc Peters, Ken Kuwayti, Mark Danis, Amir Weinberg, and Matt Ahn.
Firm Sues Nine Top Auto Manufacturers in MHL TEK Matter
In MHL Tek v. Nissan, et al., we represent MHL Tek and its owners, the inventors of a pioneering system for continuously monitoring tire pressure while
a vehicle is in motion. In July 2007, the firm filed the initial action in the Eastern District of Texas asserting three
of MHL Tek’s tire pressure monitoring system patents against nine automakers: Nissan, Subaru, BMW, Porsche, Volkswagen, Audi,
Kia, Hyundai, and Isuzu, and is investigating adding two more manufacturers as defendants. Due to substantial safety concerns
associated with under-inflated tires, as reflected in the Ford Explorer/Firestone litigation, federal legislation now mandates
that all passenger vehicles be equipped with a tire pressure monitoring system. Given the public safety concerns and the
huge market potential of these systems, this matter is sure to be closely watched in the automobile manufacturing industry.
Our clients are represented by David Doyle, Richard Kim, Katherine Parker, and Aramide Fields.
Morrison & Foerster Helps Thought Leaders Lay Groundwork for Future Success
Some of the world’s most pioneering organizations rely on Morrison & Foerster’s IP practice. Biomimicry is an emerging area
of science that studies nature’s best ideas and then imitates these designs and processes to solve human problems. Morrison
& Foerster works with the Biomimcry Institute and the Biomimicry Guild to develop and implement their intellectual property
strategy including patents, trademarks, and trade secrets. Attorneys supporting these organizations include Gladys Monroy, Tessa Schwartz, Susan Mac Cormac, Charlene Kon, Pamela Pasti, and Jonathan Glass.
Multi-Media: Look. Listen. Learn.
Morrison and Foerster's IP Group is much more than the articles presented above. With this edition of the Quarterly Newsletter,
we introduce our Multi-Media section. Included in it are links to webinars, presentations, discussions, as well as articles
written by our attorneys and about our attorneys. This is a sample of how our attorneys are engaged and involved in the practice
of law, and how that practice shapes businesses, trends and communities.
Articles
Business Method Patents in Danger? (pdf)
By Greg Reilly and Eric Acker
January, 2008
Taming Texas (pdf)
By Nate Raymond, reporter for ALM Media
March, 2008
The cover article for the March issue of The American Lawyer, this article features Rachel Krevans and addresses the Eastern District of Texas’s rise in prominence for patent litigation
trials and the firm’s victory in Forgent v Echostar.
Speaking Engagements
January, 2008
CEO Roundtable, attended by David Doyle and Eric Acker, Partners, San Diego Office.
“Changes in Patent System, January 2008,” click here for a transcript of this meeting (pdf). Reprinted from The Daily Transcript, January 31, 2008, Vol. 123. No. 23. Used with permission.
Webinars and Podcasts
The N-Data Consent Decree: Standards Setting and Fair Play (1 hr. 26 min.; 37.28 MB) (mp3)
Presented by Sean Gates, Karl Kramer, Penny Preovolos
February, 2008
Slides: Click for PDF Slides
