Patent Law

Law Review Case Note Topics for 2010-2011

By Dennis Crouch

Dear Law Review Editors: Please send me a note (dcrouch@patentlyo.com) to let me know about patent law focused articles that you publish in your journal so that I can highlight them on Patently-O.

Student Note Topics: Here are some suggestions for patent law focused law review topics for 2010-11 that I would like to see for my own edification. Please send me an e-mail if you choose one of these.

• Transnational Infringement: Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc. (Fed. Cir. 2010). When is a patent "on sale" or "sold" in the US? This note is likely to be published because its subject matter relates to Deep-sea Horizon. http://www.patentlyo.com/patent/2010/08/transocean-v-maersk-speeding-up-deepsea-drilling.html
• Expanding the Printed Matter Exclusion: King Pharmaceuticals, Inc. v. Eon Labs, Inc. and Elan Pharmaceuticals, Inc. at http://www.patentlyo.com/patent/2010/08/ignoring-non-patentable-elements-while-judging-novelty.html
• Hyatt v. Kappos will come out soon. That en banc decision will focus on the admissibility of new evidence when a patent applicant files a district court civil action to challenge the PTO's refusal to grant a patent. http://www.patentlyo.com/patent/2010/02/en-banc-hyatt-kappos-145.html
• Antitrust and Patent Misuse: Princo Corp. v. International Trade Commission and U.S. Philips Corp. (Fed. Cir. 2010) (en banc) (holding that an anticompetitive agreement between companies to suppress a given technology would not constitute misuse of a patent covering an alternative technology being promoted by the companies). I might consider whether antitrust law is sufficient to deter this type of alleged collusive behavior. http://www.patentlyo.com/patent/2010/08/federal-circuit-holds-line-on-patent-misuse-defense.html.
• Expanding the Scope of "Secret" Prior Art: In re Giacomini (Fed. Cir. 2010). In an important case, the Federal Circuit has expanded the scope of so-called 102(e) "secret prior art." Under the decision, a US patent or published application will be considered prior art as of the filing date of its qualifying provisional application. The case is important because of the large number of provisional patent applications being filed each year. http://www.patentlyo.com/patent/2010/07/federal-circuit-extends-the-scope-of-102e-secret-prior-art.html
• Suing Individuals for Patent Infringement: Wordtech Systems, Inc. v. Integrated Networks Solutions, Inc. at http://www.patentlyo.com/patent/2010/06/employee-and-officer-liability-for-inducing-infringement.html
• Written Description Requirement and Post-Ariad Judicial DecisionMaking. I would locate all decisions that cite the 2010 en banc decision in Ariad, write about those decisions and try to uncover whether the separate written description requirement was important to the outcome. See http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1554949
• A qualitative analysis of inequitable conduct pleading pre/post Exergen v Wal-Mart. For this study, I would uncover 100+ pleadings that allege inequitable conduct and see whether pleading style has changed. In Exergen, the CAFC emphasized the heightened pleading requirement for defenses of inequitable conduct. http://www.patentlyo.com/patent/2009/08/fraud-on-the-patent-office-federal-circuit-emphasizes-rule-9b-heightened-pleading-requirement-for-defense-of-inequitable-c.html.
• Some of the ideas from 2009 and 2008 have not been taken.

Full post as published by Patently Obvious on September 01, 2010 (boomark / email).