Intellectual Property Defies NFL’s Labor Lockout; Fantasy Draft Held for Supreme Court Patent Cases

Intellectual Property Defies NFL’s Labor Lockout; Fantasy Draft Held for Supreme Court Patent Cases

The NFL's labor lockout could put a stop to the football season. And like dominoes falling, no football season means no fantasy football, which means no fantasy football draft.

How to fill the void?

We had to come up with some sort of draft to tide us over until football resumes. What we came up with is the 2011 Supreme Court/Patent Case Draft, selecting 10 draftees from the Supreme Court's most recent patent cases (restricted to the past 10 years).

There were many stars to choose from ... KSR, Stanford v. Roche, MedImmune ... to name a few. In drafting, we asked league members to give a "why" he or she liked a particular case, not how important the case was. The draft wasn't about the cases' importance - that would be a ranking. We also asked league members to equate each case with a professional athlete of their choosing, hoping to merge our two passions, intellectual property and sports.

Of course, any pick could be the draft equivalent of a first round "bust." We won't name names, but the Sporting News lists the 10 biggest first-round draft busts of the last 20 years. If you question our ability to pick'em, leave a comment below with your picks, your reasons, and/or the Supreme Court case/professional athlete equivalent. We'd also like to know if we have any "busts" and why.

And so, as the League Commissioner might say, "With the first pick in the 2011 Supreme Court/Patent Case Draft, the [insert your favorite team] select ...

 

#1 Bilski v. Kappos, 2010 U.S. LEXIS 5521 (U.S. 2010) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

Justice Kennedy's plurality opinion addressed a critical patent question: what subject matter is patentable under 35 U.S.C. § 101? The Court held that the machine-or-transformation (MORT) test was a useful tool for answering the question but also held that the Federal Circuit's application of the test was unduly restrictive.

Why Biski went #1:

Bilski can be likened to the Patriots' Tom Brady - a sure thing at #1. The opinion has a weakness in that it didn't provide a bright line test. But #1 picks aren't always perfect. Bilski was taken at #1 for a couple reasons - it's recent, it concerned a patentability question, and it cracked the Court into a plurality.

 

#2 KSR Int'l Co. v. Teleflex Inc., 2007 U.S. LEXIS 4745 (U.S. 2007) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

In KSR, which involved a patent claim for an adjustable automobile pedal, the Court critiqued the Federal Circuit's obviousness test - a/k/a the "TSM" test -- which required that in order to bar the patentability of an invention consisting of a combination of prior art elements, the prior art had to contain a "teaching, suggestion or motivation" to combine those elements. The Court held that the Federal Circuit's application of the TSM test had been too rigid.

Why KSR went #2:

If Bilski is Tom Brady, then KSR is the Colt's Peyton Manning. KSR could have easily gone number #1 as it mirrors Bilski in several aspects. Both involved a patentability question and the application of a legal test, and in both cases, the Court reprimanded the Federal Circuit for applying the applicable test too rigidly. However, KSR is too tidy. Whereas Bilski produced a messy plurality, KSR produced a unanimous Court.

 

#3 J.E.M. Ag Supply v. Pioneer Hi-Bred Int'l, 2001 U.S. LEXIS 10949 (U.S. 2001) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

J. E. M. Ag Supply, Inc. argued that sexually reproducing plants were not patentable subject matter within § 101. Did the Plant Patent Act of 1930 and the Plant Variety Protection Act set forth the exclusive means for protecting plant life? The Supreme Court answered "no." Newly developed plant breeds fell within § 101's subject matter, and neither the PPA nor the PVPA limited § 101's scope.

Why J.E.M. went #3:

At #3, it might have been safe to go with youth ... either Microsoft Corp. v. i4i, Stanford v. Roche Molecular, or Global-Tech Appliances, Inc. v. SEB S.A ... but J.E.M. is similar to a strong veteran. If this were basketball, J.E.M. would be Shaquille O'Neal.  Yes, J.E.M. wasn't necessarily groundbreaking  -- Diamond v. Chakrabarty, 1980 U.S. LEXIS 112 (U.S. 1980) [enhanced version / unenhanced version] held that a live human-made microorganism was patentable under § 101, and under the 1985 opinion, Ex parte Hibberd, 227 U.S.P.Q. (BNA) 443 (1985) [enhanced version], some 1,800 utility patents for plants were issued - but J.E.M. was taken at #3 because the patentability of organisms is always a slippery slope and because the recent case of OSGATA et al. v. Monsanto, 11-cv-02163 (S.D.N.Y. March 29, 2011) might breathe some new life into the issue.

 

#4 MedImmune, Inc. v. Genentech, Inc., 2007 U.S. LEXIS 1003 (U.S. 2007) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

The Court held that a patent licensee's payment of royalties under protest did not preclude a justiciable case or controversy under U.S. Const. art. III. In nonrepudiating licensee declaratory judgment suits, a sufficient controversy exists when a patent owner threatens enforcement upon nonpayment of royalties and the threat could result in major harm to the licensee's business.

Why MedImmune went #4:

The fans might be booing. They're clamoring that MedImmune didn't confront a patentability question or solve a fundamental patent issue. But MedImmune has something the others don't - a Constitutional aspect. It's not too often that the Constitution and patent law collide in the High Court. Reminiscent of Detroit Lion's great, Barry Sanders - deceptively small but big on the field.   

 

#5 Microsoft Corp. v. i4i Ltd. P'ship, 2011 U.S. LEXIS 4376 (U.S. 2011) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

The Court held that 35 USCS § 282's patent invalidity defense had to be proven by clear and convincing evidence. Section 282 codified the common-law presumption of patent validity, which implicitly included the clear and convincing standard of proof required to invalidate a patent.

Why i4i went #5:

i4i is a member of "The Triplets" - one of three recent Supreme Court opinions that also includes Stanford v. Roche Molecular Sys. and Global-Tech Appliances, Inc. v. SEB S.A. Picks #5 - 7A are about youth, but i4i  was picked first because as a burden of proof decision, it provides the make-or-break for a patent invalidity defense. In baseball terms, a stopper, like the Yankee's Mariano Rivera.

 

#6 Global-Tech Appliances, Inc. v. SEB S.A., 2011 U.S. LEXIS 4022 (U.S. 2011) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

In an 8-1 decision, the Court held that induced infringement under 35 U.S.C.S. § 271(b) requires knowledge that the induced acts constitute patent infringement.

Why Global-Tech went #6:

Global-Tech heightened § 271(b)'s knowledge requirement and rejected the Federal Circuit's test for knowledge --"deliberate indifference to a known risk that a patent exists." The aforementioned test was replaced with a "willful blindness" test.  Despite these developments, Global-Tech went #6 instead of earlier because it dealt with indirect, as opposed to direct, infringement. Like Dallas Maverick's guard Jason Kidd ... more of a passer than a shooter.

 

#7A Stanford v. Roche Molecular Sys., 2011 U.S. LEXIS 4183 (U.S. 2011) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

In a 7-2 decision (Justices Breyer and Ginsberg dissented), the Court held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors  to unilaterally take title to such inventions.

Why Stanford went #7A:

Stanford was deemed a "tweener," which, in basketball terminology, describes a player who can play two positions but who is not suited to play either position exclusively. Think basketball great, Charles Barkley. So, will Stanford play big or will it play small? Translation: Will Stanford be the end-all on the Bayh-Dole issue, or will the opinion force Congress to change the law?

 

#7B Quanta Computer, Inc. v. LG Elecs., Inc., 2008 U.S. LEXIS 4702 (U.S. 2008) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

Addressed the question: Does patent exhaustion apply to the sale of components of a patented system that must be combined with additional components in order to practice the patented methods? The Federal Circuit held that the doctrine did not apply to method patents at all and, in the alternative, that it did not apply because the sales were not authorized by a license agreement. In a 9-0 decision, the Court disagreed.

Why Quanta went #7B:

Patent exhaustion has a 150 year history. The Court first applied it in 19th-century cases addressing patent extensions on the Woodworth planing machine. Quanta brings the doctrine to the future - to computer technology patents - where the Court broadly reaffirmed the principle of patent exhaustion. Quanta, as an exhaustion doctrine case, is like a wily veteran that still produces on the field. Think baseball free agent Jamie Moyer, who, at 48, recently pitched for the Philadelphia Phillies.

 

#8 Microsoft Corp. v. AT&T Corp., 2007 U.S. LEXIS 4744 (U.S. 2007) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

Question: Does either provision of 35 U.S.C. § 271(f) apply when software is exported on a master disk or by electronic transmission, copied by a foreign recipient, and then installed on computers made and sold overseas? The Court answered in the negative.

Why Microsoft went #8:

If Global-Tech Appliances, Inc. v. SEB S.A. went after the 5th pick, then it's the same with Microsoft. And if Global-Tech is comparable to Jason Kidd, then Microsoft is comparable to Phoenix Sun's playmaker, Steve Nash. Though compelling on the facts and as a software case, Microsoft, like Global-Tech, dealt with indirect infringement under § 271; specifically § 271(f), which is analogous to active inducement liability and contributory liability.

 

#9 eBay Inc. v. MercExchange, L.L.C., 2006 U.S. LEXIS 3872 (U.S. 2006) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

The Court unanimously held that the traditional four-factor test for permanent injunctive relief applied to patent disputes. The Federal Circuit had applied the rule that permanent injunctions will issue against patent infringement absent exceptional circumstances. The Court rejected the Federal Circuit's exceptional circumstances rule as inconsistent with traditional principles of equitable relief.

Why eBay went #9:

eBay's not a starter, but it can come off the bench and give you some great minutes. Comparable to basketball's Sixth Man of the Year, Lamar Odom of the Los Angeles Lakers. eBay didn't address a compelling patent question, but it did affect the federal courts' willingness to grant permanent and preliminary injunctions in patent cases.

 

#10 Merck KGaA v. Integra Lifesciences I, Ltd., 2005 U.S. LEXIS 4840 (U.S. 2005) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

The Court held that 35 U.S.C.S. § 271(e)(1)'s safe harbor protects the use of patented compounds in preclinical studies as long as there is a reasonable basis to believe that the compound tested might be the subject of an FDA submission and the experiments will produce the types of information relevant to a 21 U.S.C.S. § 355 drug application.

Why Merck went #10:

Merck impacted the use of patent compounds in preclinical studies/research. But safe harbors are similar to role players -- those athletes who play mainly in specific situations. Like an early Devin Hester of the Chicago Bears, when he mostly returned punts. Safe harbors are the exception to the rule, their impact felt only in limited scenarios. Thus, Merck, a § 271(e)(1) safe harbor case, was treated as a role player, dropping it to #10 in the draft.

 

Going undrafted:

Holmes Group, Inc. v. Vornado Air Circulation Sys., 2002 U.S. LEXIS 4022 (U.S. 2002) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

The Federal Circuit lacked jurisdiction over a case in which the complaint did not allege a claim under patent law but the answer contained a counterclaim under patent law.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 2002 U.S. LEXIS 3818 (U.S. 2002) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]

Held: Prosecution history estoppel may apply to any claim amendment made to satisfy the Patent Act's requirements, not just to amendments made to avoid the prior art, but estoppel need not bar suit against every equivalent to the amended claim element.

 

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Comments

Anonymous
Anonymous
  • 07-15-2011

I don't even see how the two things relate. I'm not sure if you are talking from an intellectual property attorney standpoint or if this should make sense to the average reader but it doesn't.