JOLT Digest

Is It Unconstitutional for Congress to Take Foreign Works Out of the Public Domain?
By Julie Dorais – Edited by Matt Gelfand

Golan v. Holder, No. 10-545 (U.S. 2010)
Transcript of Oral Arguments

On October 5, 2011, the Supreme Court heard oral arguments for Golan v. Holder. The case involves the challenged constitutionality of Section 514 of the Uruguay Round Agreements Act (codified as 17 U.S.C. §§ 104A, 109), which extends copyright protection to certain foreign works that have already been in the public domain in the United States. Petitioners claim that Section 514 violates both the First Amendment and Progress Clause of the Constitution. The government in turn contends that Congress acted constitutionally and in accordance with a significant interest in complying with international obligations.

The case comes up after the Tenth Circuit upheld the constitutionality of Section 514 in two separate decisions, with the first decision rejecting the Progress Clause challenge and the second decision rejecting the First Amendment challenge. The Digest covered the Tenth Circuit’s first decision, the district court’s decision on remand, the Tenth Circuit’s second decision, and the plaintiffs’ petition to the Supreme Court. For commentaries on the oral arguments, see Copyright and Trademark Blog and The Denver Post.

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Supreme Court to Consider Civil Procedure Issues in Two Patent Cases
By Marina Shvarts – Edited by Dorothy Du

Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010)
Petition for Writ of Certiorari hosted by scotusblog.com

Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S, 601 F.3d 1359 (Fed. Cir. 2010)
Petition for Writ of Certiorari hosted by scotusblog.com

In Kappos v. Hyatt, the Court will consider whether a patent applicant who is seeking to overturn a Patent and Trademark Office (“PTO”) decision in a Section 145 civil action may introduce new evidence that could have been, but was not, presented to the PTO, and when new evidence is introduced, whether the district court can decide related factual questions de novo or whether it must give deference to the PTO’s prior decision.

In Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S, the Court will consider the extent of a generic drug manufacturer’s rights to file a counterclaim under the Hatch-Waxman act seeking an order to require the patent holder to correct or delete the patent information submitted to the FDA that misstates the scope of the patent.

Patent Docs summarizes the Federal Circuit en banc decision in Kappos. Patent Docs also discusses the Federal Circuit holding in Caraco Pharmaceutical Laboratories.

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Supreme Court Holds California Ban on Violent Video Games Violates First Amendment
By Raquel Acosta – Edited by Dorothy Du

Brown v. EMA, No. 08-1448 (June 27, 2011)
Slip Opinion via supremecourt.gov

The Supreme Court affirmed a Ninth Circuit decision that had found that a California law that restricted the sale or rental of violent video games to minors did not comport with the First Amendment and permanently enjoined its enforcement.

Justice Scalia delivered the opinion of the Court.  In a 7-2 decision, the Court upheld the lower court decisions and repealed California Assembly Bill 1179 (2005), Cal. Civ. Code Ann. §§1746-1746.5 (West 2009) (“the Act”) (a law passed in 2005 by the California State Legislature which required more stringent rating standards on video games), banned the sale of violent video games to anyone under the age of 18, and imposed a maximum $1000 per violation.  The Supreme Court held that video games were afforded the same First Amendment protections as other forms of communication.  Areas in which restrictions on free speech are allowed are limited to obscenity, incitement, and fighting words.  In so holding, the Court rejected the Government’s argument that a balancing test may be used to justify restrictions, holding that a legislature may not add new categories of unprotected speech.

The Virtual World Law Blog provides an overview of the case.  David Kopel, writing for the Volokh Conspiracy, examines the “the weapons effect” (the theory that being exposed to aggressive stimuli will make ordinary individuals more inclined towards aggressive behavior) and uses the Brown decision in his critique of legislative anti-gun laws. Wikipedia provides a thorough analysis of the case and is informative as to the case history and the context in which Brown arises. SCOTUSblog contains an interesting commentary on the litigation strategies used.

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by Vivian Tao

House Passes Patent Reform Bill; Senate and House Versions To Be Reconciled

A few months after the American Invents Act had passed in the Senate, the House voted to pass its version of the bill this week. The controversial bill would overhaul certain areas of the patent system, such as switching from a first-to-invent to a first-to-file system. However, according to Patent Docs, the ACLU and other groups are more concerned that passage of the bill could signal Congressional approval of gene patenting, which could preclude individuals from seeking a second opinion for genetic evaluations. The Hill also notes that there is controversy on whether the bill’s streamlining of the patent process would lead to “efficient infringement” or truly better protection. Despite these issues, Patently O reports that the House and the Senate will likely work together to reconcile differences in their separate versions of the bill and vote on a final version soon. The Digest will have more in-depth coverage of the bill this week.

Oracle Seeks Billions in Damages from Google; Another Oracle Patent Is Severely Narrowed in Rexam

The U.S. Patent Office’s latest findings have helped Google’s case in the latest chapter of Oracle’s ongoing lawsuit against Google for alleged patent infringement regarding the Android operating system. According to Groklaw, the U.S. Patent Office rejected 17 of Oracle’s 21 claims on one of Oracle’s asserted patents. Search Engine Watch reports that this comes on the heels of Google’s motion to place the case under seal to protect confidential information and shareholder confidence, which may have already started to suffer. However, the crux of the case may lie in the damages figure. PCWorld reports that arguments revolve around the damages that Oracle has claimed, between $1.4 and $6.1 billion, which Google says is a gross overestimate. Among the many counterarguments advanced by Google, the Wall Street Journal notes the figure takes Google’s Android advertising revenue into account, but could be disputed since the advertisements and software at issue can run independently. Trial is set to begin in October.

Supreme Court To Hear Prometheus Again

The Supreme Court has agreed to hear Prometheus Laboratories v. Mayo Clinic, a multi-year suit involving the patentability of medical diagnostic tests (the Digest covered the original Federal Circuit ruling). The Supreme Court vacated the Federal Circuit’s original ruling in light of their ruling in In re Bilski, but the Federal Circuit affirmed its original ruling of validity, according to Courthouse News Service. As Techdirt notes, opponents of patenting such tests argue those patents threaten the right to observe natural phenomena, and issuing such patents would also drive up costs and make bedside diagnoses difficult to administer. However, Prometheus asserts that their test “transforms” a blood sample into something that is no longer human and is thus protected by the machine-or-transformation test of patentability. Prometheus also argues that a holding for Mayo might be broad enough to eliminate all diagnostic and therapeutic patents. The Wall Street Journal notes that this could damage the incentives for private investment into therapeutic medicine. Ultimately, when the case is decided, it will have an effect on a range of other patented medical tests that currently exist.

Supreme Court Holds Bayh-Dole Act Does Not Independently Vest Ownership to Federally Funded Contractors
By Daniel Robinson – Edited by Esther Kang

Bd. of Tr. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. ____ (June 6, 2011)
Slip Opinion (via supremecourt.gov)

The Supreme Court affirmed the Federal Circuit, which had held that the Bayh-Dole Act did not void an inventor’s assignment of intellectual property rights to a company.

The Court held in a 7-2 decision that Stanford University had no standing to sue Roche Molecular Systems for infringing an HIV testing procedure patent because the company was a co-owner of the patent. In so holding, the Court stated that the Bayh-Dole Act, which permits federally funded contractors to retain patents to their inventions in certain situations, does not independently divest a contractor’s employee and vest title in the contractor.

SCOTUSBlog provides an overview of the case. The New York Times criticizes the decision, saying it undermines the purpose of the Bayh-Dole Act. IPWatchdog features a thorough analysis of the decision. (more…)