Recent Court Decisions  

In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)(The machine-or-transformation test is the governing test for determining patent eligibility of a process under § 101 and is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article.)

Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. ___ (2008)(The authorized sale of an article that substantially embodies a patent exhausts the patent holder's rights and prevents the patent holder from invoking patent law to control postsale use of the article.  A product substantially embodies a patent if it has no reasonable noninfringing use and includes all the inventive aspects of the patented method.)

Axcan Scandipharm Inc. v. Ethex Corp., D.Minn. (October 19, 2007)(To the extent the limitations period of Minn. Stat. § 541.02 applies to a claim under the Lanham Act, such claims are time barred insofar as they challenge conduct that occurred more than six years before the action commenced.)

In re Seagate Technology, LLC, Misc. Docket No. 830 (August 20, 2007)(Overruled affirmative duty of due care standard of Underwater Devices,717 F.2d 1380 (Fed. Cir. 1983) and adopted objective recklessness standard for enhanced damages. Court also held that advice of counsel defense does not waive attorney-client privilege or work product immunity with respect to trial counsel.)

Festo Corp. v. SMC Corp. (Festo XIII), Fed. Cir. (July 5, 2007)("The function/way/result test or insubstantial differences test is inapplicable to the question of foreseeability. An equivalent is foreseeable if one skilled in the art would have known that the alternative existed in the field of art as defined by the original claim scope, even if the suitability of the alternative for the particular purposes defined by the amended claim scope were unknown.")

KSR International Co. v. Teleflex Inc., 550 U. S. ____,127 S. Ct. 1727 (2007)("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.")  See USPTO Examination Guidelines for Determining Obviousness, eff. Oct. 10, 2007.

Microsoft Corp. v. AT&T Corp., 550 U. S. ____ (2007)(Software in the abstract is not a "component" under 35 USC § 217(f) that triggers extraterritorial patent infringement liability)

MedImmune, Inc. v. Genentech, Inc.,127 S. Ct. 764 (2007)(a patent licensee need not breach its license agreement in order to file a declaratory judgment action regarding the licensed patent)

SanDisk Corp. v. STMicroelectronics, Inc., Case No. 05-1300 (Fed. Cir. 2007)(standing to file declaratory judgment action exists when the plaintiff must choose between pursuing arguably illegal behavior or abandoning that which he claims a right to do)

Recent Publications

Jeffrey C. Brown, Law Protection That Lasts, Architect, February 2008.

Jeffrey C. Brown, Too Close for Comfort, A high-profile copyright infringement case shows how courts think about architecture, Architect, November 2007.

Jeffrey C. Brown, Yours, Truly, Why bother to register designs with the U.S. copyright office? An attorney breaks it down, Architect, September 2007.

Jeffrey C. Brown, Chirco et al. v. Crosswinds Communities, Inc., et al., Architect, March 2007.

Jeffrey C. Brown, Copyright Infringement Liability for Video-Sharing Networks, Intellectual Property Litigation, ABA Section of Litigation, Vol. 18, No. 2, Winter 2007.

Jeffrey C. Brown, William Hablinski Architecture v. Amir Construction: Copyright case highlights subjective aspect of calculating damages, Architect, February 2007.

Jeffrey C. Brown, Mixed Results When U.S. IP Law Goes Traveling Abroad, Executive Counsel, Vol. 4, No. 1, January/February 2007.

Jeffrey C. Brown, Copyright Infringement Liability for Video Sharing Networks:  Grokster Redux or Breaking New Ground under the Digital Millennium Copyright Act, The Computer & Internet Lawyer, Vol. 23, No. 12, December 2006.