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
Federal Circuit Applies Supreme Court’s New Test for Declaratory Judgment Jurisdiction
The Federal Circuit Court of Appeals recently reversed a district court’s dismissal of a declaratory judgment action, relying on the Supreme Court’s decision in MedImmune Inc. v. Genentech Inc., 127 S.Ct. 764 (2007). See Micron Technology, Inc. v. MOSAID Technologies, Inc., 2008 WL 540182 (Feb. 29, 2008)
Micron was one of the four largest manufacturers of dynamic random access memory (DRAM) chips. Micron, together with Samsung Electronics Company, Ltd, Hynix Semiconductor, Inc., and Infineon Technologies of North America, controlled seventy-five percent of the worldwide market for these chips. Continue Reading Federal Circuit Applies Supreme Court’s New Test for Declaratory Judgment Jurisdiction
A Fresh Look At Managing Intellectual Property
By Scott Hervey
As 2008 gets underway, its time for companies to take a fresh look at how they manage intellectual property assets. This applies to companies that have never taken serious steps to protect intellectual property, and those companies that have an understanding of the value of intellectual property and take active steps to secure and protect these assets. The three steps below are a good starting point for companies addressing this issue for a first time, and are a well needed refresher for companies that already have IP management protocols in place.Continue Reading A Fresh Look At Managing Intellectual Property
The Federal Circuit Finds Mental Process Unpatentable
Patentable subject matter (i.e. what kinds of things can be patented) includes processes, machines, articles of manufacture, and compositions of matter. 35 U.S.C. §101. Abstract ideas, natural phenomena, and laws of nature are non-patentable (or non-statutory) subject matter. Computerized methods of doing business are increasingly likely to be rejected as non-patentable subject matter by the PTO, and the courts are becoming more likely to affirm these rejections. In re Comiskey, 499 F.3d 1365 (Fed. Cir. Sept. 20, 2007) is such a case. Continue Reading The Federal Circuit Finds Mental Process Unpatentable
New U.S. Patent and Trademark Office Rules
The United States Patent and Trademark Office (“PTO”) has revised the patent rules in an attempt to reduce the PTO’s workload, although the stated purpose is to “allow the Office to conduct a better and more thorough and reliable examination of patent applications.” The rule changes were initially proposed in January 2006 and the final rules were published in the Federal Register on August 21, 2007. The changes will take effect on November 1, 2007, although some rules will apply to patent applications filed before November 1, 2007 as well as those filed after November 1, 2007.
Continue Reading New U.S. Patent and Trademark Office Rules