United States: Intellectual Property Quarterly Newsletter, Winter 2007

Last Updated: December 27 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. § 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.

Click here to read the full text of this article.

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. 

Click here to read the full text of this article.

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.

Click here to read the full text of this article.


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

We began tracking courts’ application of eBay in the spring 2007 inaugural edition of our Intellectual Property Quarterly Newsletter.  This third installment of our "eBay Scorecard" tracks the application of such discretion by the district courts, and the review for abuse of that discretion by the Federal Circuit, through September 30, 2007.  Included in this quarter’s count is the district court’s decision on remand in eBay.  The district court applied the four-factor framework set forth by the Supreme Court and denied the injunction.  We hope that you find this chart helpful.

Plaintiff Practices Invention?

Infringing Use Limited to Minor Component?

Injunction Would Cause Public Harm?










(July 1, 2007 through September 30, 2007)







Injunctions Granted (5)







Injunctions Denied (1)







Cumulative Total

(May 15, 2006 through September 30, 2007)







Injunctions Granted (26)







Injunctions Denied (8)








The Patent Reform Act: Reining In The Entire Market Value Rule?

By Marc Pernick and Chris Jeu

This article focuses on one potential change, as a result of the passage of H.R. 1908 by the House and the pending S. 1145 in the Senate.  The authors examine the state of existing law on the "entire market value rule" of damages, review the changes in the pending legislation, describe the advocates lobbying on the proposal, and try to predict what will result if the legislation in its current form passes.

Click here to read the full text of this article.

Awards And Top Honors

On November 8, Chambers & Partners named the firm as a Top 3 finalist for both the Global Intellectual Property Law Firm of the Year and Global Law Firm of the Year awards.  The award is recognition for the IP practice’s exceptional work around the world in all areas of IP law.  Click on this link to read about the award: http://www.chambersandpartners.com/img/awards/GlobWinners2007.pdf.

The Condé Nast business publication, Portfolio.com, named Harold McElhinny to its 2007 list of Top 10 U.S. Patent Litigators.  The article calls attention to Mr. McElhinny’s list of clients, including EchoStar, and reputation "for his independent judgment."  This is the latest honor presented to Mr. McElhinny, who earlier this year was inducted as a fellow into the American College of Trial Lawyers.  Click on this link to read the full article: http://www.portfolio.com/resources/business-intelligence/Best-Patent-Litigators.

From The Docket

Software Industry Abuzz Over Widely Watched Copyright Case SCO v. Novell

On Friday, August 10, 2007, a Morrison & Foerster team obtained summary judgment for Novell before Judge Dale Kimball in Federal District Court in Utah.  The court ruled that Novell is the owner of the UNIX and UnixWare copyrights, and that SCO was obligated to recognize Novell’s waiver of SCO’s claims against IBM.  In 2003, SCO claimed that Linux was an illegal knockoff of the UNIX operating system, which SCO had purchased from Novell.  This ruling disposes of that claim.  The Wall Street Journal described the ruling as "a boon to the ‘open source’ software movement...that has become an alternative to Microsoft Corp.’s Windows operating system."  Novell still has claims pending regarding SCO’s alleged failure to comply with the asset purchase agreement, entering into UNIX licensing agreements without Novell’s permission, and royalties owed from those agreements.  The team was led by Michael Jacobs and Kenneth Brakebill, along with Eric Acker, Marc Pernick, Grant Kim, and David Melaugh.

White v. Hitachi Winds Down After Summary Judgment and Reexamination Opinion   

Morrison & Foerster obtained a summary judgment ruling in the Eastern District of Tennessee on September 17, 2007, for Hitachi Global Storage Technologies (Hitachi GST) in a patent suit involving disk drive technology.  The firm represented Hitachi Ltd. in its 2002 acquisition of a controlling interest in IBM’s disk drive business, now renamed Hitachi GST.  Hitachi Ltd. contributed its disk drive business to Hitachi GST in March 2003.  Plaintiff White filed suit for infringement of his 519 patent in 2004, alleging that IBM’s license terminated as a result of the Hitachi transaction.  In 2005, the case was stayed pending reexamination of the patent, except for litigating Hitachi GST’s license defense.  On September 17, 2007, the court granted Hitachi GST summary judgment due to a valid license.  Then on October 2, 2007, the PTO issued a final rejection of the more than 100 claims in patent, which had been through a previous reexamination.  The team of IP litigators was led by Andrew Monach and Kathy VaclavikKenneth Siegel and Paul Jahn headed the corporate and IP licensing transactions.

A Fixture At The ITC

2007 has been a busy year for the firm’s ITC practice. In October, the firm filed a patent-related investigation with the ITC on behalf of complainants Funai Corp. and Funai Electric Co.  The case (337-TA-617) involves Digital Television technology patented by Funai.  The experienced team of ITC litigators includes partner Brian Busey and associates John Kolakowski and Teresa Summers from the firm’s Washington D.C. office, partner Harold McElhinny from the San Francisco office, partner Karl Kramer from the Palo Alto office, partners Anthony Press and Hector Gallegos and associate Nicole Smith from the Los Angeles office, and partners Moto Araki, Mark Danis and Louise Stoupe from the Tokyo office.  This latest action is the third ITC case the firm became involved in this year.  The firm is presently handling two other ITC cases.  In the first investigation, we represented complainants Toshiba Corporation and Toshiba America Consumer Products LLC (337-TA-2568) in a matter involving DVD technology against 17 Chinese manufacturers and U.S. distributors of DVD players and recorders.  In the second investigation, we represented respondent Sanyo (337-TA-600) in a matter involving lithium-ion battery technology.  

Broad Technical Talent On Display In The Eastern District Of Texas

Clients have long known Morrison & Foerster’s IP practice has the expertise to handle matters involving any technology.  And if the venue is the Eastern District of Texas, clients know Morrison & Foerster is the firm to call.  This year alone, Morrison & Foerster has been retained as counsel in over two dozen cases in the Eastern District of Texas.  This speaks to our strong reputation in that influential venue.  We highlight two new Eastern District of Texas cases for which we’ve been retained as counsel this fall, as well as two cases in other jurisdictions.

We currently represent Yahoo! in a patent infringement suit filed by Performance Pricing in the Eastern District of Texas.  The case (Performance Pricing v. Google, Yahoo!, et al.) involves Internet advertising technology.  Morrison & Foerster partners Michael Jacobs and Richard Hung along with associate Jeremy Bock make up the litigation team.

In November, the firm filed a patent infringement lawsuit (Novartis Vaccines v. Hoffman-LaRoche, et al.) on behalf of Novartis Vaccines against Hoffman-LaRoche in the Eastern District of Texas.  Novartis contends Hoffman-LaRoche and the other defendants are willfully infringing a Novartis patent entitled "Antigenic composition comprising an HIV gag or env polypeptide" by making and selling the drug Fuzion in the United States.  Novartis is seeking compensatory and treble damages in addition to a jury trial.  Leading the San Francisco–based litigation team are Morrison & Foerster partners Rachel Krevans, Matthew Kreeger, and Jason Crotty, and associates Daniel Muino and Amy Dachtler.

In other jurisdictions, this month the firm filed a patent infringement suit on behalf of clients Fujitsu Limited and U.S. Philips Corporation in the Western District of Wisconsin, said to be a new rocket docket. The case, Fujitsu Limtied et al v. Netgear, Inc. covers inventions essential to the IEEE 802.11 standard ("WiFi").

Within the same week, we filed another patent infringement suit on behalf of plaintiff Accenture, Accenture v. Guidewire, in the District of Delaware. This matter concerns software patents that allow insurance companies to better manage and implement their claims processing. This is the first patent infringement suit Accenture has filed. The team handling both matters will be led by Jim Pooley and Scott Oliver

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions