House Passes Major Patent Reform Bill

By David Lawson — Edited by Wen Bu

H.R. 1908
Full Text with Comments
CRS Bill Summary
Details of the Vote

On September 7, the U.S. House of Representatives passed H.R. 1908, a major patent reform bill, by a vote of 220-175. The bill is now on the Senate legislative calendar awaiting action.

The Washington Post identifies the players and summarizes the debate.
Peter Zura’s 271 Patent Blog focuses on the late amendments that proved necessary to the bill’s passage.
Patent Docs detail the arguments against the bill.

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Stronger 1st Amendment Review of Expansions in Copyright Protection?

By Nick Bramble

On September 5, the 10th Circuit handed down its opinion in Golan v. Gonzales, No. 05-1259 (10th Cir. Sept. 4, 2007). The court held that the implementation of the Berne Convention on Copyrights (the Uruguay Round Agreements Act § 514) may violate the 1st Amendment by removing some materials–books, films, and songs, mostly–from the public domain and placing them under copyright protection. Generally, the court’s ruling would expand the scope of 1st Amendment review when Congress acts to change copyright law. The court reasoned that if Congress alters the “traditional contours of copyright protection,” then its actions should be subject to strict or intermediate scrutiny. See Slip Op. 05-1259 at 16. The 10th Circuit concluded that URAA § 514 did alter these “traditional contours” by deviating from the “bedrock principle of copyright law that works in the public domain remain in the public domain.” Id. at 16-17. It remanded to the district court to determine whether § 514 was a content-based or content-neutral restriction on speech and to apply the necessary 1st Amendment review.

From the free culture side of the copyright debate, Jack Balkin celebrates the ruling but cautions that its overreliance on Eldred v. Ashcroft‘s “traditional contours of copyright law” test might justify expansions of copyright law if it can be shown that new copyright laws “create differences only in degree rather than kind” and “are part of a gradual historical progression of increased copyright protection.” Larry Lessig weighs in on Golan’s relevance to his petition to the Supreme Court to grant review of Kahle v. Gonzales, a recent 9th Circuit ruling that looked less favorably on a similar constitutional challenge to copyright law. William Patry is far less enthusiastic, calling the ruling “the first vindication of an approach argued by Larry Lessig and colleagues that I had thought made no sense at all.”

Federal Circuit Narrows Willful Infringement Standard, Clarifies Waiver Issue With Respect to Opinion Letters

By David Lawson

In Re Seagate Technology, LLC
Federal Circuit, Miscellaneous Docket No. 830, Aug. 20, 2007
Slip Opinion

On August 20, the Federal Circuit, en banc, changed its standard for evaluating the willfulness of patent infringement for the purpose of awarding enhanced damages under 35 U.S.C. § 284, making it much more difficult for patentees to demonstrate willful infringement.

The court also clarified the application of attorney-client privilege in proving willful infringement, an important issue because opinion letters are often the best defense against allegations of willful infringement.

Commentary:
Morrison & Foerster: In Re Seagate Technology, LLC: The Federal Circuit Abolishes the Duty of Care in Willfulness Cases
Intellectual Property Today, Michael Bonella: A Reasonable, Balanced Answer to In Re Seagate Tech.

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Federal Circuit Further Circumscribes Doctrine of Equivalents

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (“SMC”)
Federal Circuit, No. 05-1492, July 5, 2007
Slip Opinion

On July 5, in the latest decision in a nearly-twenty-year saga which has cumulatively proven enormously important in defining the scope of the doctrine of equivalents, the Federal Circuit (Dyk, J.) held that an existing equivalent can be foreseeable at the time of a patentee’s amendment, even if it would have been impossible for an observer of ordinary skill in the art to foresee at the time of amendment that the equivalent would ultimately satisfy the tests for equivalence.

Commentary:
Dewey Ballantine: Federal Circuit Elucidates ‘Foreseeability’ Component of Equivalents Test
Sutherland Asbill & Brennan: Making the Unforeseeable, Foreseeable

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