By Scott Cameron

After more than 150 years, the U.S. Supreme Court recently took exhaustion, or at least the doctrine of patent exhaustion, to new levels. The doctrine of patent exhaustion, also known as the first sale doctrine, has been used routinely to limit the patent rights that survive the initial authorized sale of a patented item. In QuantaComputer, Inc. v. LG Electronics, Inc., decided June 9, 2008, the Supreme Court reaffirmed the doctrine and held that it applied not only to patents on an apparatus, but on a method as well. Continue Reading Even After 150 Years, Exhaustion Is Not Too Tired To Be A Good Defense

By Audrey A. Millemann

One of the requirements of a valid patent is enablement. As set forth in 35 U.S.C. section 112, paragraph 1, a patent’s specification must contain “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” The Court of Appeals for the Federal Circuit has explained that the enablement requirement is met “when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” AK Steel Corp. v. Sollac, 344 F.3d. 1234, 1244 (Fed. Cir. 2003). Although anticipation or obviousness based on the prior art is a more frequently asserted basis for invalidating a patent in patent infringement litigation, the Federal Circuit’s decision in Sitrick v. Dreamworks, LLC, 516 F.3d. 993 (Feb. 1, 2008) suggests that lack of enablement may be becoming a far more powerful tool. Continue Reading Lack of Enablement – A Stronger Tool for Invalidity

By Andrea Anapolsky

In a complex case stemming from a dispute over scientific discoveries made more than three decades ago, the California Supreme Court has provided fresh guidance on determining when a fiduciary relationship exists. This past April, the court reversed the Court of Appeal’s findings that Genentech, Inc. (“Genentech”) violated a fiduciary duty to City of Hope National Medical Center (“City of Hope”) in connection with a 32-year old licensing agreement. Rather, the court held that a fiduciary relationship is not necessarily imposed simply when one party, in exchange for royalty payments, entrusts a secret invention to another party to develop, patent and market the product. This article provides a review of the case and its implications.Continue Reading The California Supreme Court Sheds New Light on Fiduciary Relationships