Letter from AmeriKat: This 'n That

Last week the AmeriKat was hanging on tenterhooks constantly refreshing the US Supreme Court page hoping that the decision in Bilski had finally been issued. Low and behold, a watched Supreme Court webpage doesn't deliver opinions. Time was not completely wasted, however. (picture, left - the AmeriKat takes a nap while awaiting Bilksi) The AmeriKat has learned that waiting for someone or something to occur is generally a wasted activity and so she spent the interim time prowling the web for other IP news, going to the gym, tackling her two page To-Do list and various other ignored activities. After all of this, the Supreme Court still had not delivered a decision but that was no skin off the AmeriKat's nose leather. She had been extremely productive in the interim period. So productive, it seems, that the bulk of US news stories that she was to write about in her weekly Letter she already posted during the week. So this week, she delivers a some bits of bobs from the US IP.

Catcher in the Rye Back to Batts: Last Friday, the US Second Circuit Court of Appeals held that Judge Batts had erred in her reasoning by not applying all of the equitable principles required for the evaluation of a preliminary injunction when she granted the injunction to prohibit the sale of Fredrick Colting's sequel to Catcher in the Rye,60 Years Later: Coming Through the Rye. In June last year, JD Salinger, the now deceased author of The Catcher in the Rye, filed a lawsuit in the US District Court in New York claiming that 60YL infringed “both his novel and the character of Holden Caulfield” and aiming to prohibit the publication of the sequel in the US (for further background on the case see the AmeriKat's previous reports here). In overturning the injunction, the Court of Appeals found that Judge Batts had considered only the likelihood of success of Salinger's copyright infringement claim and not also, for example, whether Salinger would suffer irreparable harm if the injunction was not granted. Judge Guido Calabresi stated:

"Because Salinger had established a prima facie case of copyright infringement, and in light of how the district court, understandably, viewed this court's precedents, the district court presumed irreparable harm without discussion."

Judge Calabresi continued by saying that the lower court's decision was understandable given that the US Supreme Court's standard for granting injunctions in eBay Inc v MercExchange (2006), a patent case, was inconsistent with the 2nd Circuit's standard for preliminary injunctions in copyright cases. The Court of Appeals vacated Batts' decision but allowed the injunction to remain for 10 days so that Salinger's estate could apply for a temporary restraining order pending the rehearing. It is important to note that although the Court of Appeals vacated the injunction, the issues regarding Salinger's likelihood of success for the substantive issues remained in his favor.

Patent's inequitable conduct to get a rehearing: Last week the US Court of Appeals for the Federal Circuit granted an en banc rehearing of the appeal of a Californian district court decision in Therasense, Inc v Becton Dickinson & Co that held a patent to be unenforceable due to inequitable conduct. (picture, left - an example of inequitable conduct) The panel opinion delivered this past January affirmed the lower court's finding that the applicant's failure to disclose statements made to the EPO about their patent's European counterpart amounted to inequitable conduct. This opinion was also vacated by last week's order. Under Rule 56, patent applicants must disclose to the USTPO all information that is material to the patentability of the invention. Withholding any material information or making false representations along with the intent to deceive the USTPO is held to be inequitable conduct. Inequitable conduct is generally pleaded by defendants as an affirmative defence and allows a federal judge to void patents on a finding that a company deceived the USPTO in order to obtain a patent. The Federal Circuit's January decision was heralded by some as meaning that applicants had to submit all information relating to their patent application including documents submitted to foreign patent offices - a massive burden you can imagine for some international pharmaceutical and biotech companies! The en banc court will prove to be important in that setting out guidelines as to what documents and from where a patent applicant must disclose to the USPTO to avoid a finding of inequitable conduct. The Federal Circuit has asked the parties to submit arguments addressing these questions prior to the hearing. Also last week, a majority panel in last week's case of Avid v Crystal Import Corporation found there had been inequitable conduct on the part of the applicants.

Awaiting Judge Lee's Decision in Rosetta Stone - Last week, the AmeriKat and IPKat wrote about the breaking news of Judge Lee's granting of summary judgment in favor of Google in the Adwords case brought by Rosetta Stone. The AmeriKat has been prowling the Internet for the past hour and has determined that Judge Lee has yet to issue his formal decision. As soon as he does the AmeriKat will be on it!