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On March 19, 2013, the Supreme Court issued its long-awaited opinion in Kirtsaeng v. John Wiley & Sons, Inc. John Wiley is an academic textbook publisher that gives rights to publish English-language editions of its textbooks to its foreign subsidiary in Asia. The textbooks at issue in this case were published and sold in Asia by John Wiley’s foreign subsidiary. There was a notation inside each book that explained that the book was only authorized for sale in certain countries and that importation of the book outside of those countries would be a violation of the publisher’s copyright. Supap Kirtsaeng, a citizen of Thailand, moved to the United States in 1997. Because copies of the foreign textbooks were less expensive in Thailand, Kirtsaeng asked his friends and family there to buy copies of the books and mail them to him in the United States. Kirtsaeng then resold them in the United States, reimbursed his family and friends, and kept the profit.
The America Invents Act (AIA) that was passed in late 2011 contains a number of significant changes to the U.S. patent system. One of the most important changes under the AIA will take place on March 16, 2013, which is when the U.S. patent system will change from a “first-to-invent” patent system to a “first-to-file” patent system.
On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act (commonly referred to as “the AIA”), which implements some of the most fundamental revisions to the nation’s patent system ever. Some of the AIA’s provisions have already gone into effect and some of the most significant provisions, such as the AIA’s “first-inventor-to-file” provisions, will go into effect on March 16, 2013. Meanwhile, as of the one-year anniversary of the signing of the AIA (on September 16, 2012), additional provisions are now in effect. They include:
On August 31, 2012, the Federal Circuit issued its long-awaited en banc opinion in the companion cases of Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp. In both cases, the patent claims at issue were directed to patented methods, but multiple parties carried out the steps required by the claims. A situation in which no one party carries out the steps required by a patented method but in which all of the steps are carried out by multiple parties has heretofore commonly been referred to as a case of “divided infringement.” Prior to the Akamai and McKesson decisions, a finding of divided infringement usually meant a win for the defendant and a loss for the patent owner on the issue of infringement.
On March 28, 2012, I had the honor and pleasure of moderating a roundtable discussion featuring Chief Judge Randall R. Rader of the Federal Circuit on the subject of the Federal Circuit Advisory Council’s recently-adopted Model Order Regarding Electronic Discovery in Patent Cases. The discussion took place before a standing-room-only crowd at the ABA’s 27th Annual Intellectual Property Law Conference in Arlington, Virginia. As is always the case with the Chief Judge, the discussion was lively and entertaining, featuring not only points to philosophically ponder but also clear and resolute directives on a number of issues.
In Robert Bosch LLC v. Pylon Mfg. Corp. (Fed. Cir. October 13, 2011) the Federal Circuit revisited the standards for issuing permanent injunctions after judgment has been entered finding infringement and validity. Specifically, the court made it crystal clear that findings of validity and infringement do not give rise to a presumption of irreparable harm. In doing so, however, the court also made it clear that the eBay pendulum has not swung nearly as far in favor of infringers as some have predicted.
One thing all Internet domain names (e.g., yourbusiness.com) have in common is the necessity of a top level domain, or “TLD,” such as .com, .net, .us, or any of over 250 other country-code and generic TLD extensions. As of September 2011, a new TLD, .xxx, has been added. The new .xxx TLD is, as the name suggests, a TLD dedicated to Internet-based adult entertainment. It is a “sponsored” TLD, meaning the public at large cannot register .xxx domain names, only members of the “Sponsored Community,” namely, persons and entities affiliated with providing Internet-based adult entertainment content. But this by no means guarantees that a trademark owned by a non-adult entertainment provider is safe from becoming part of a .xxx domain name. The same force that has driven piracy of domain names for years—the ability of high value trademarks to draw Internet traffic—will no doubt drive adult entertainment providers to try to register high value trademarks as .xxx domain names. An adult entertainment provider might thus try to register a .xxx domain name featuring your valuable trademark simply because of its notoriety, hoping to co-opt the fame of your mark into increased traffic to its website. Cognizant of this risk, ICANN, the governing body for Internet domain names, has placed additional conditions on the initial allocation of .xxx domain names. Chief among these is the opportunity for non-adult entertainment providers to reserve their trademarks during a “sunrise” period that is presently underway or, failing that, to register them later as non-resolving domain names incapable of linking to websites. In either instance, you can act now to decrease the likelihood that your trademarks will appear in .xxx domain names and thereby link your mark and your company to adult entertainment.
The opinions of the Federal Circuit and Supreme Court over the past ten to fifteen years have had few bright moments for patent owners. Proving infringement has become more difficult, and proving invalidity has become easier. The Federal Circuit’s recent decision in Therasense v. Becton Dickinson and Co. departs from this trend, increasing in significant ways the burden on defendants attempting to prove patents unenforceable for inequitable conduct.
On May 31, 2011, the U.S. Supreme Court decided Global-Tech Appliances, Inc. v. SEB S.A. At issue in Global-Tech was the mens rea (i.e., state of mind) required for a finding of “active inducement” under 35 U.S.C. § 271(b).
On June 9, 2011, the U.S. Supreme Court decided Microsoft Corp v. i4i Limited Partnership. Section 282 of the Patent Act states that “[a] patent shall be presumed valid” and that “[t]he burden of establishing invalidity . . . shall rest on the party asserting it.” Since 1984, the U.S. Court of Appeals for the Federal Circuit has read § 282 to require an accused infringer seeking to prove invalidity to do so by “clear and convincing evidence.” American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359-60 (Fed. Cir. 1984).