Thursday, November 10, 2005

Clueless commentary on US patents from Financial Times?

Concluding that "Congress may get around to rewriting the patents laws in due course. But in the meantime, the justices appear poised for action," Patti Waldmeir of Financial Times seems to have forgotten what happened in Grokster and in Merck. In Grokster, the Supreme Court, while dealing a serious blow to Grokster, left open the big question of whether technologies as those of Grokster would qualify for the Betamax exemption. In Merck v. Integra, the Supreme Court, while seeming to open up the exemption of 271(e)(1), left open the possibility that Integra would win on remand, and thus that the exemption might not be as big as people might think. The big question of research tools was left untouched. Neither case is an argument for the Supreme Court being "poised for action" in intellectual property. Congress at least has the excuse of conflicts among special interest groups.

Waldmeir mentioned the pending Laboratory Corp v Metabolite Laboratories (in which C.J. Roberts likely will not participate). Waldmeir presented dire quotations: "People are very alarmed at the potential of the court to upset the scope of eligible subject matter in areas well beyond diagnostics,” says Stephen Maebius, a patent expert at the law firm Foley & Lardner, noting that the case “could water down the rights of patent owners”. “This case could restrict the ability of inventors to protect software products or business methods,” says Charles Steenburg of the intellectual property law firm Wolf, Greenfield & Sacks. However, the case is more about whether one can patent a correlation arising from a truth of basic science.

Waldmeir mentions the eBay case and its relevance to certain questions about injunctions in patent cases. Waldmeir also mentions KSR International v Teleflex; I discussed some of the generic obviousness issues argued in cert petitions of KSR in the paper "Patent reform 2005: can you hear me, Major Tom?" [available on the internet]

The final case mentioned is NTP v. RIM.

Curiously, Waldmeir omitted mention of a significant patent case that is before the Supreme Court, Independent Ink, Inc. v. Illinois Tool Works. Therein, the Supreme Court will address the important question of whether possession of a patent raises a rebuttable presumption of market power in a tying case under Sherman Act § 1. The CAFC rather directly asked for Supreme Court guidance: noting the rebuttable presumption "contains many infirmities" and concluding that "the time may have come to abandon the doctrine, but it is up to the Congress or Supreme Court to make this judgment."
Hopefully, a direct answer will be given, perhaps more forcefully than in the earlier tying case Jefferson Parish Hospital District No. 2 v. Hyde, 466 U.S. 2 (1984).

Waldmeir also neglected to mention the FTC's petition for cert of the case Schering-Plough v. FTC, 402 F.3d 1056 (CA11 2005). The significance of this case was discussed by Lawrence T. Kass in the October 3 issue of the New York Law Journal. I guess word hasn't reached England yet.

One notes that Chief Justice Roberts has recused himself from many cases. He has declined to participate in a variety of appeals, which were turned down without comment, including cases involving Microsoft Corp., Nokia Inc., Pfizer Inc. and Merck & Co.

Curiously, MSN basically republished the Financial Times article at


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