Intellectual Property Quarterly Newsletter, Winter 2007


Article edited by Jason Crotty, Peter Davis and Martin Noonen

The Narrowing Of Patentable Subject Matter By The Federal Circuit: In re Nuijten And In re Comiskey

By Richard Kim and Katherine Parker

Until very recently, the scope of patentable subject matter under the Patent Act encompassed four categories - process, machine, manufacture, or composition of matter.† These were broadly construed to encompass just about anything manmade.† However, with the In re Nuijten and In re Comiskey opinions, explained and compared in this article, the Federal Circuit substantially narrowed what was previously thought to be within the purview of 35 U.S. C. ß 101.† The Federal Circuit held that a business method, if not combined with a machine, is not patentable, and that a signal, on its own, is similarly not patentable.† These decisions create three new conditions for patentability not previously recognized by case law: a "technological arts" requirement, a "non-transience requirement, and a "tangibility" requirement.

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Second Circuit Says No Retroactive Copyright Licensing

By Craig Whitney

In the Davis v. Blige case, discussed in depth in this article, the Second Circuit ruled that all retroactive copyright transfers and licenses are invalid.† While the decision seems sound under the facts of this case, its broad conclusions could have far-reaching effects in the copyright licensing world.†

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News & Notes On Reexaminations

By Marc D. Peters

Reexamination requests are increasing at an impressive rate, given the Supreme Court's decision in KSR v. Teleflex, wherein the Court expanded the obviousness inquiry beyond the Federal Circuit's teaching-suggestion-motivation (TSM) test.† This article explores the importance of the KSR decision and it's growing impact.† While clients and litigators are obviously more comfortable with the reexamination process, they must pay very close attention to how the PTO handles the administrative challenge of the increase in reexamination requests.

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eBay Scorecard

By Angela Rella

On May 15, 2006, the Supreme Court changed the landscape of patent cases by striking down the Federal Circuit's long-standing rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances, and holding that "the traditional four-factor framework that governs the award of injunctive relief" applies to patent cases.† eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837, 1841 (2006) ("eBay").† The Supreme Court stated that "the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with the traditional principles of equity, in patent disputes no less than in other cases governed by such standards."† Id.†

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