Publications

By: Alison M. Taroli Introduction: Patent protection for newly discovered chemical compounds is one of the most important priorities for a successful pharmaceutical company. In order to obtain a patent, a chemical compound must be nonobvious at the time of its invention. As compared with obviousness evaluations in chemical cases, application of the law of obviousness to inventions in the electrical and mechanical sciences is fairly straightforward. Obviousness in the chemical arts has been difficult to determine in light of chemistry’s inherent unpredictability. The properties of a chemical compound can be dramatically altered with only slight structural changes. Courts have attempted to address this difficulty by further defining the law of chemical obviousness to include subtests relating to structural similarity and motivation to make the claimed composition. However, these tests have failed at simplifying the obviousness test for chemical compounds, particularly in light of the significant increase in combinatorial chemistry techniques in the pharmaceutical industry. Due to the enormous costs associated with drug research and discovery, the law of obviousness of chemical compounds needs to be further defined to provide pharmaceutical companies with sufficient notice as to whether their newly created compounds will be refused patent protection due to obviousness in view of the prior art.

By: Olivia Y. Truong Abstract: Increasingly, our daily lives revolve around and rely on the Internet and digital world. We will inevitably accumulate some amount of virtual wealth in the form of email accounts, social networking profiles, and even digital replicas (or avatars) of ourselves. As we populate the Internet with traces of our lives, the ugly truth is that none of that virtual wealth really or absolutely belongs to us. This note explores the concept of “virtual inheritance,” or the idea of transferring one’s virtual property rights—a right to which we should be entitled. By revealing how the right to transfer is frustrated in the virtual game world context, this note will bring to light the growing need for a legal framework that would acknowledge an individual’s right to one’s virtual property.

By: Adam Sibley Abstract: The “FDA safe harbor provision,” enacted as part of the Hatch-Waxman Act and codified at 35 U.S.C. § 271(a), excepts from infringement uses of patented inventions that are solely and reasonably related to submissions to the FDA. Over the past twenty years, the Supreme Court has broadened this safe harbor to include medical devices and upstream research, in cases such as Eli Lilly v. Medtronic, 496 U.S. 661 (1990), and Merck KGaA v. Integra Lifesciences I, 545 U.S. 193 (2005). Throughout this broadening evolution, the Supreme Court has fashioned analytical tests as well as specific definitions for various applicable terms, such as “patented invention.” However, in August 2008, the Federal Circuit brought an abrupt halt to this trend in its decision in Proveris Scientific Corp. v. Innovasystems, Inc., 536 F.3d 1256 (Fed. Cir. 2008). Although the result in Proveris might well be correct, the opinion displays obvious tensions with Supreme Court precedent and leaves many questions unanswered.

By: Ariel Ronneburger Introduction: Cecilia Barnes’ online profile included her name, workplace contact information, and nude photographs. The pictures, posted on a web page hosted by Yahoo! Inc., received so much attention that they motivated a number of men who did not know Ms. Barnes to find her at work. Given her Internet exposure, Ms. Barnes probably should not have been surprised by these visits. However, Ms. Barnes never posted these photos herself—her ex-boyfriend did. After Ms. Barnes informed Yahoo! that she had not consented to the online profile containing her nude photographs, the company still failed to remove the profile from its website. The Oregon District Court determined that Yahoo! was not liable for any harm caused by the dissemination of Ms. Barnes’ photographs and personal information. While the Ninth Circuit Court of Appeals later determined that Ms. Barnes had a cause of action against Yahoo!, this decision was based solely on the fact that the company had promised Ms. Barnes that it would remove the pictures from its site. The Ninth Circuit opinion is unfortunately under-protective because, based on its reasoning, services like Yahoo! can avoid liability simply by refraining from making any promises to assist victims like Ms. Barnes.

By Philip G. Semprevio II Summary: For the past several years, the Supreme Court has been paying close attention to the patent laws and the effects those laws have on business relationships. There have been eight patent cases decided by the Supreme Court over the past five years; this trend shows no signs of stopping. The Court recently granted certiorari to Quanta Computer in a case that could potentially change the environment in which business is done. The case, LG Electronics v. Quanta Computer, was decided by the Court of Appeals for the Federal Circuit on July 7, 2006. The Court of Appeals ruled in favor of LG Electronics (LGE), overturning the ruling by the Northern District of California, which found that LGE’s patents at issue in the case were exhausted. Since the Supreme Court has decided to take this case, they will have the opportunity to differentiate between two separate branches of the patent exhaustion doctrine that have evolved over nearly a century of patent jurisprudence. That last time the Court addressed patent exhaustion explicitly was in 1942. This article will address the history of the patent exhaustion doctrine and how this line of cases evolved into the Supreme Court issue it is today. After the background for the case has been described, a discussion of where the case history and an application of how the Supreme Court should apply the exhaustion doctrine in this case will follow.

By: Caitlin McGowan Summary: A single mother of two downloads twenty songs off of the Internet from a service provider. A record company sues her for willful copyright infringement alleging that she downloaded the music when she had reason to know that the songs were illegal downloads. Thus, the download of the songs was considered a willful copyright infringement under the Copyright Act and was subject to the maximum permissible statutory damages within the judge’s discretion. The download of each song was considered an infringement and was multiplied by the $150,000 in damages that could be awarded under the Act. The judge, within the limits of the Act, found for the plaintiffs, a large record company, and ordered that the defendant pay $3 million. Unfortunately, when the woman declared personal bankruptcy after the decision the damages were not subject to discharge because they were considered a willful and malicious injury. Thus, her infringement and the grossly excessive damages would follow her throughout the bankruptcy proceedings and for the rest of her life. The Bankruptcy Act was enacted with the purpose of giving debtors a fresh start. So, in the hypothetical above, the single mother who downloaded a minimal twenty songs off the Internet, if done so without intent, would not be burdened for the rest of her life by the $3 million judgment against her if she declared bankruptcy. In fact, under the Bankruptcy Code, even the presumption is in favor of the debtor, meaning that the record company would have to prove that the single mother’s infringement was willful and malicious. Nevertheless, because of changing definitions of willful and malicious under the Bankruptcy Code, and various judicial interpretations of their definitions within the Copyright Act, the single mother above may be liable for the full judgment.

By Robert Sleeper Summary: The Hakim patent infringement case created a considerable confusion as patent practitioners struggle to understand the CAFC holding and the potential impact on their clients and practice. Hakim articulated limits on the inventor’s ability to broaden the scope of an invention through continuation applications. A thorough analysis of the confusing Hakim opinion reveals various potential approaches that confirm the CAFC’s analysis. The court focused on a prosecution disclaimer and did not address other well established laws surrounding claim construction, the written description requirement, or continuation practice support that could have invalidated the patent. As a result of Hakim, many issued patents may be invalidated in court if prosecution history reveals insufficiently clear rescissions of patent scope disclaimers in parent applications. The Hakim opinion should not surprise practitioners as it remains another, in a stream of recent cases, which weaken the United States patent system by imposing costly and onerous patent prosecution requirements on inventors and practitioners.