Featured Expert Column
Beth Z. Shaw, Brake Hughes Bellermann LLP
Earlier this year, the U.S. Court of Appeals for the Federal Circuit sat en banc to review software patents in CLS Bank Int’l v. Alice Corp. This was a decision that was supposed to clarify business method patents and software patents, the scope of 35 U.S.C. § 101, and what an “abstract idea” means in practice. Instead of clarity, however, the judges of the Federal Circuit issued seven different opinions (or reflections), with no consensus beyond the ultimate judgment, which was that the invention was patent ineligible. The split gave almost every judge an opportunity to provide his or her unique philosophical view on software patents. As the title of this commentator’s last post on CLS Bank reflected, Want Clarity on Software Patents?: Skip CLS Bank Int’l Opinion and Wait for Supreme Court Review. That wait is now over, as the Supreme Court agreed on December 6 to review the Federal Circuit’s “decision.”
Prior Supreme Court decisions in cases like Bilski v. Kappos and Mayo v. Prometheus provide clues as to how the Supreme Court might rule in this case. First, the Supreme Court is probably not going to create “a categorical rule denying patent protection for inventions in areas not contemplated by Congress,” such as software, business methods, or even diagnostic testing. Indeed, the Supreme Court in Bilski explicitly stated that a “business method is simply one kind of ‘method’ that is, at least in some circumstances, eligible for patenting under § 101.” And the Court stated in Mayo that “too broad an interpretation” of exclusionary principals “could eviscerate patent law.” As a result, the Supreme Court will not even attempt to eliminate all types of method patents in one fell swoop. Continue reading
by Gerald L. Maatman, Jr. and Lily M. Strumwasser, Seyfarth Shaw LLP
Last week the U.S. Court of Appeals for the Fifth Circuit delivered welcome news to employers and practitioners of labor and employment law. After years of heated debate regarding whether employers are permitted to use bilateral arbitration to resolve employment disputes, the Fifth Circuit answered with a resounding “yes.” In D.R. Horton, Inc. v. NLRB, No. 12-60031 (5th Cir. Dec. 3, 2013), the Fifth Circuit reversed the National Labor Relations Board’s (“NLRB”) 2012 ruling and held that employers and employees are permitted to resolve disputes through individual rather than class or collective arbitration.
Laying The Groundwork – The NLRB’s Decision
As we wrote about here last year for Washington Legal Foundation, in this case, a former employee of D.R. Horton filed an unfair labor practice charge with the NLRB, alleging that a class action waiver contained in his arbitration agreement with D.R. Horton violates the NLRA. Based on the employee charge, the NLRB’s General Counsel issued a complaint alleging that D.R Horton’s arbitration agreement violated Section 8(a)(1) of the NLRA by infringing the right of D.R. Horton’s employees to exercise their rights under Section 7 of the NLRA, which provides that employees may “engage in . . . concerted activities for the purpose of collective bargaining or other mutual aid or protection.”
In a two-member majority of the three-member Board, the NLRB held that because the arbitration agreement directly infringes on the substantive Section 7 rights of D.R. Horton’s employees, it necessarily fails. The Board rejected the suggestion that Section 7 rights are procedural and not substantive. The Board drew a critical distinction between the process of certifying a class of employees (which it conceded is procedural in nature) and the “collective action inherent in seeking class certification,” which it held is a substantive right under Section 7. Continue reading
The current issue of Washingtonian magazine features its annual recognition of “Washington’s Best Lawyers.” The list is categorized by practice area, from antitrust to whistleblowers. Washington Legal Foundation is pleased to note that seven attorneys who serve on our Legal Policy Advisory Board have been recognized as Best Lawyers this year. They are:
- Rick Rule, Cadwalader Wickersham & Taft (Antitrust)
- George Terwilliger III, Morgan Lewis & Bockius (White Collar)
- Glen Nager, Jones Day (Employment Defense)
- Richard Frank, Olson Frank Weeda Terman Matz (Food and Drug)
- Coleen Klasmeier, Sidley Austin (Food and Drug)
- Stuart Gerson, EpsteinBeckerGreen (Health Care)
- Ted Olson, Gibson, Dunn & Crutcher (Supreme Court)
- Thomas Goldstein, Goldstein & Russell (Supreme Court)
Chaired by The Honorable Dick Thornburgh, WLF’s Legal Policy Advisory Board includes private practitioners, corporate counsels, academics, and elected officials from around the country, all of whom serve in this advisory role on a voluntary basis.
We are also honored that Washingtonian chose 80 attorneys who have donated their pro bono services to WLF as Best Lawyers, including each attorney selected in the “Supreme Court” category. Those attorneys have acted as authors of our publications, speakers at our educational programs, or counsels for our amicus briefs.
Featured Expert Column
Beth Z. Shaw, Brake Hughes Bellermann LLP
Inequitable conduct is a defense to patent infringement. It is only used where the patentee has unfairly obtained an unwarranted patent through misconduct. To prove inequitable conduct, a challenger must show by clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the PTO. The U.S. Court of Appeals for the Federal Circuit tried to clarify the law of inequitable conduct in Therasense sitting en banc in 2011. Yet, once again, a panel of the Federal Circuit is retreating from the standards set forth in Therasense.
The Federal Circuit in The Ohio Williow Wood Co. v. Alps South, LLC reversed and remanded for a district court to review the issue of inequitable conduct. In the background leading to the judgment in this case, Alps had challenged a patent of The Ohio Willow Wood Company (OWW) in two reexamination proceedings at the USPTO. The patent is directed to cushioning devices that go over the residuals stumps of amputated limbs to make use of prosthetics more comfortable. Alps requested a first ex parte reexamination of the patent, and OWW amended the claims of the patent.
Alps requested a second ex parte reexamination of the patent, challenging the amended claims, and the examiner at the USPTO rejected the claims as obvious. OWW appealed to the Board of Patent Appeals and Interferences (BPAI). OWW argued that the examiner’s rejection was improper because it relied on the uncorroborated testimony of an expert whom OWW characterized as a highly interested party. The BPAI concluded that the testimony was insufficient to sustain the examiner’s rejection.
The case had been stayed at the district court pending the result of the reexamination. When the district court lifted the stay, the court granted summary judgment of no inequitable conduct by OWW. Yet, the Federal Circuit found genuine issues of material fact regarding whether OWW committed inequitable conduct during the two reexamination proceedings. Continue reading
Buckyballs creations; photo: flickr.com
In two past Legal Pulse posts (here and here), WLF’s Mark Chenoweth has criticized the Consumer Product Safety Commission (CPSC) for its pursuit of a small business that produced the adult desktop magnet item Buckyballs. By demanding (but not requiring) a recall of the magnet toy, alleging that the toy was defective in a lawsuit, and leaning on Buckyballs retailers, CPSC drove the business into bankruptcy. Adding unprecedented insult to injury, the Commission named the company’s founder and CEO personally in a lawsuit. A WLF Legal Backgrounder explains that aspect of the case and its troubling ramifications. Others have weighed in similarly on this questionable tactic.
On November 12 in a Wall Street Journal op-ed ($), Nancy Nord, a recently departed CPSC Commissioner, wrote that with the Buckyballs action, the Commission has “crossed the line” between “safety regulation and overreach.” She continued:
The CPSC action to remove Buckyballs from the market raises serious questions about how the government acts to protect consumers. In its zeal to address a problem that it believes to be a serious safety concern, the CPSC seems to have adopted the philosophy that any action, no matter how heavy-handed and outside established practice, is warranted if it achieves the desired result.
She noted in the op-ed that Buckyballs founder Craig Zucker recently filed a declaratory judgment lawsuit against the CPSC in the U.S. District Court for the District of Maryland. Ms. Nord wrote that “I hope he (Zucker) wins his lawsuit.”
So do we.
Featured Expert Column
Andrea Agathoklis Murino, Wilson Sonsini Goodrich & Rosati
Certain transfers of exclusive patent licenses in the pharmaceutical sector will face new antitrust scrutiny from the Federal Trade Commission (“FTC”).* In a change to long-standing policy, the FTC announced that the transfer of a license providing an exclusive licensee with “all commercially significant rights” over a patent within a therapeutic area will be reportable under the HSR Act.
Under the old scheme, only the transfer of licenses giving the licensee a right to make, use, and sell the product were subject to the provisions of the HSR Act. This meant that in cases where a licensor retained the right to manufacture the patented pharmaceutical product, even if the licensee had the exclusive right to use and sell the patented pharmaceutical product, the transfer was deemed non-exclusive and thus non-reportable. The shift means that parties will need to prepare the HSR Act filing itself, observe the mandatory waiting period before closing (typically 30 days), and, of course, be prepared to respond to any competitive concerns raised by the FTC. Continue reading
Last Friday just prior to the Veterans’ Day weekend, the Food and Drug Administration (FDA) issued a highly anticipated notice of proposed rulemaking which addresses the U.S. Supreme Court’s 2012 decision, PLIVA v. Mensing. The proposal, Supplemental Applications Proposing Labeling Changes for Approved Drugs and Biological Products, was introduced by Dr. Janet Woodcock, director of FDA’s Center for Drug Evaluation and Research, in an FDA Voice blog post. The proposal, according to her, is “intended to improve the communication of important drug safety information about generic drugs to both prescribers and patients.”
As emphasized in a New York Times story about the proposal, “The rule would also pave the way for lawsuits from patients who could now claim that generic companies did not sufficiently warn them of a drug’s dangers.”
As WLF’s Rich Samp argued here last August in Can FDA Lawfully Overrule SCOTUS Generic Drug Preemption Decision Through Regulation?, WLF doubts that FDA has the authority under federal law to take such an action. We look forward to participating in the regulatory process and the accompanying debate that will intensify now that FDA has formally proposed the rule.
by Svend Brandt-Erichsen, Marten Law PLLC*
A U.S. Court of Appeals for the Ninth Circuit panel ruled last month in Washington Environmental Council v. Bellon that environmental plaintiffs do not have standing to bring a citizen suit under the federal Clean Air Act to force state agencies to regulate greenhouse gas (GHG) emissions from five oil refineries in the State of Washington. The district court had granted summary judgment to the environmental groups, holding that air agencies were required to regulate GHG emissions under a Washington regulation that requires existing sources to employ reasonably available control technology (RACT).
On appeal, the Ninth Circuit concluded that the environmental groups had not established standing to pursue their claims. Applying the federal three-part standing test, the court assumed (without deciding) that the environmental groups had shown injury-in-fact from GHG emissions due to climate change, but concluded that they had failed to establish a causal link between GHG emissions from the five refineries and the claimed climate change injuries, or that a court order requiring regulation of the refineries’ GHG emissions would redress their claimed injuries. A Ninth Circuit vote on whether the panel’s decision should be reviewed en banc is pending.
To establish the first standing element (injury-in-fact), members of the environmental groups had submitted declarations attesting to recreational, aesthetic, and economic injuries that they have experienced and attribute to climate change impacts in Washington. The Ninth Circuit panel stated that it would assume, without deciding, that the declarations provided the sort of evidence of immediate and concrete injuries necessary to satisfy the first standing element of injury-in-fact. Continue reading