Foley & Lardner, Washington, D.C.
Jon Dudas, partner at Foley & Lardner, Washington, D.C., served as Under Secretary of Commerce and Director of the United States Patent and Trademark Office from July 2004 to January 2009 under former President George W. Bush. Prior to joining the Bush Administration, he served years as Counsel to the Subcommittee on Courts and Intellectual Property, and Staff Director and Deputy General Counsel for the House Committee on the Judiciary, working on key IP legislation, including the 1999 American Inventors Protection Act and the Digital Millennium Copyright Act.
As Dudas notes in his discussion, Senate Bill S. 515, as approved by the Senate Judiciary Committee April 2, 2009, proposes many changes to U.S. patent law, including: harmonizing U.S. patent law with international patent law by moving from a first-to-invent system of priority to a first-inventor-to-file system; allowing for several forms of post-grant review; removing the applicant’s failure to include best mode as a ground for invalidating a patent; and adopting a standard that requires willful infringement for purposes of enhanced damages to be proven by clear and convincing that the infringer acted “objectively reckless.”
The last action on the House’s version of the “Patent Reform Act of 2009,” H.R. 1260, was an April 30 hearing before the House Judiciary Committee.
For more information on Jon Dudas, go to Foley & Lardner’s website at go to the firm’s website at http://www.foley.com/
Read the version of Senate Bill S. 515 reported on April 2, 2009.
Read H.R. 1260 in its introduced form.
Dr. Bernard Finn
Curator Emeritus of the Smithsonian Institution
Dr. Bernard Finn is Curator Emeritus of the Electricity Collections at the Smithsonian Institution’s National Museum of American History. In his article, “Bell and Gray, Just a Coincidence?,” Technology and Culture, Vol. 50, No. 1, January 2009, pp. 193-201, Dr. Finn dispels the suggestion by some writers that Alexander Graham Bell is not the true inventor of the telephone. He points out that many of these commentators fail to recognize that the liquid transmitter device at the center of the Bell-Gray controversy was not commercially practicable, and—importantly—not the telephone. Still, Dr. Finn encourages those interested in this fascinating chapter of American inventive history to read the works of other authors in forming their own conclusions on this issue.
Some of the works that Dr. Finn cites are: “Elisha Gray and the Telephone: On the Disadvantages of Being an Expert” by David Hounshell; The Telephone Gambit by Seth Shulman; The Telephone Patent Conspiracy of 1876 by A. Edward Evenson; The Gray Matter: The Forgotten Story of the Telephone by Burton Baker; and Reluctant Genius: Alexander Graham Bell and the Passion for Invention by Charlotte Gray.
Dr. Rouget "Ric" Henschel
Foley & Lardner, Washington, D.C.
Dr. Rouget F. (Ric) Henschel is a partner with Foley & Lardner LLP and vice chair of the firm’s Chemical & Pharmaceutical Practice. He is also a member of the firm’s Biotechnology & Pharmaceutical, Intellectual Property Litigation and International Practices and the Life Sciences Industry Team. He graduated from Georgetown University Law Center (J.D., 1999), City University of New York (Ph.D., organic chemistry, 1990), the City College of New York (B.S., chemistry, 1981), and was a law clerk for Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit.
Henschel sat down with us to discuss his disappointment with the Federal Circuit’s April ruling in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009). In this case, the appellate court affirmed an obviousness rejection by the Board of Patent Appeals and Interferences of claims submitted by Marek Kubin and Raymond Goodwin covering DNA molecules encoding a protein known as natural killer (NK) cell activation inducing ligand (NAIL).
The Federal Circuit concluded that the claimed methodology of isolating NAIL cDNA was essentially the same as the prior art given the known properties of these proteins, and thus “obvious to try” in light of the Supreme Court’s ruling in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). In doing so, the court rejected the continued application of In re Deuel, 51 F.3d 1552 (Fed. Cir. 1995), a biotech case which found “obvious to try” an inappropriate test for obviousness. Henschel, who represented amicus curiae Biotechnology Industry Organization (BIO) in this case, insists that KSR, which involved a mechanical pedal control for an automobile, is misapplied in this context, where the biotechnology inventions are much more complex and unpredictable. He also notes in the interview that, in focusing on how the applicants arrived at the claimed invention, In re Kubin ruling is in direct conflict with 35 U.S.C.§103(a), which states that “[p]atentability shall not be negatived by the manner in which the invention was made.” He points out that In re Kubin this case represents a step back for the biotech industry, and that some issues raised in this case should be addressed by the Federal Circuit en banc.
Henschel also discusses how the defense of inequitable conduct has become a scourge in patent law by adding to litigation costs and placing more patents at risk. He notes that, despite the high bar for proving inequitable established in the en banc ruling of Kingsdown Med. Consultants Ltd. v. Hollister Inc.
, 863 F.2d 867 (Fed. Cir. 1988), recent cases have created confusion and uncertainty as to both the materiality and intent prongs. He notes that more clarity from the appellate court is needed in this area.
Read the In re Kubin opinion.
Read the KSR International Co. v. Teleflex Inc. opinion.
Read the In re Deuel opinion.
For more information on Ric Henschel and Foley & Lardner, go to the firm’s website at http://www.foley.com/.
For more information on BIO, go to http://www.bio.org/.
Professor Megan LaBelle
Catholic University’s Columbus School of Law
Among her many accomplishments, Professor Megan LaBelle served as law clerk for Judge Stephen S. Trott of the United States Court of Appeals for the Ninth Circuit, and for Judge Margaret M. Morrow of the United States District Court for the Central District of California. She also worked as a commercial litigator in private practice. LaBelle joined Catholic University’s faculty earlier this year.
For more information on Professor LaBelle and Catholic University’s Columbus School of Law, visit the school’s website at http://law.cua.edu/.
Comic book art
Andre Campbell is an incredibly talented comic book artist. Though legally blind, Andre has no trouble providing readers of all ages with truly heroic characters, compelling story lines, and beautiful art.
Andre tells us that he plans to attend the Pittsburgh Comic-Con on Sept. 11, 12, and 13 at the Monroeville Exposition Center, and the Baltimore Comic-Con on Oct. 11 and 12 at the Baltimore Convention Center.
For more information on Andre and his company, Heritage Comics HSQ, go to http://heritagehsq.tripod.com/
Tim Westergren, founder of Pandora.com, is our first visionary. Tim is a musician and inventor of a system (U.S. Patent No. 7,003,515) that analyzes a song’s characteristics and tries to match them with those of others. The result is Pandora.com, an online library where music lovers can make new discoveries and musicians can become known to wider audiences—and be paid royalties in the process. So, whether one likes jazz guitarist Pat Metheny, jazz trumpeter Miles Davis, country crooner Conway Twitty, or rocker Mick Jagger, Pandora can help to find more of what one wants to hear. With 30 million users, Tim and Pandora are changing the musical landscape. Their story started with a vision, and Intellirights is pleased to tell the world about it.
For more information on Tim Westergren and Pandora, visit Pandora.com.
Dr. Henry Grabowski
Duke University - Biologics
Dr. Andrew Bristol
Neogenix Oncology has a patent (7,314,622) relating to recombinant monoclonal antibodies and corresponding antigens for colon and pancreatic cancers. Dr. Andrew Bristol, one of the co-inventors, is the company’s vice president of research and development. Dr. Bristol received his B.A. in molecular biology from the University of California at Berkeley and his Ph. D. in biochemistry from Tufts University.
To learn more about Dr. Bristol and Neogenix Oncology, please go to http://www.neogenixoncology.com/
Bilski v. Kappos Discussion Featuring
Prof. Megan LaBelle, Catholic University Columbus School of Law Prof.
Christopher Cotropia, University of Richmond School of Law
As is clear from our discussion with Professors LaBelle and Cotropia, Bilski v. Kappos brings to light many other Supreme Court cases, including KSR Intl’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), Diamond v. Chakrabarty, 447 U.S. 303 (1980) and Diamond v. Diehr, 450 U.S. 175 (1981), Parker v. Flook, 437 U.S. 584 (1978), Gottschalk v. Benson, 409 U. S. 63, 70 (1972), and Laboratory Corp. of Am. Holdings v. Metabolite Labs. Inc., 548 U.S. 124 (2006). In addition to the decision below by the Federal Circuit in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), the discussion in this interview also mentions the Federal Circuit’s 1998 ruling in State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998). Intellirights thanks Professor LaBelle and Cotropia for offering their time and insight in reviewing this seminal case.
Professor Megan LaBelle earned a B.A., summa cum laude, from the University of California, Los Angeles, and earned her J.D. from the University of California, Davis, School of Law. Professor LaBelle served as law clerk for Judge Stephen S. Trott of the United States Court of Appeals for the Ninth Circuit, and for Judge Margaret M. Morrow of the United States District Court for the Central District of California. She also worked as a commercial litigator in private practice at the Los Angeles firm of Munger, Tolles & Olson. Professor LaBelle joined Catholic University’s faculty in 2009.
Professor LaBelle’s publications:
Patent Litigation, Personal Jurisdiction, and the Public Good, George Mason Law Review (forthcoming 2010).
"Virtual" Contacts in Patent Cases: How Should Internet-Related Contacts Affect the Personal Jurisdiction Analysis?, Journal of Internet Law (forthcoming 2010)
The "Rootkit Debacle": The Latest Chapter in the Story of the Recording Industry and the War on Music Piracy, 84 Denv. U.L. Rev. 79 (2006).
For more information on Professor LaBelle and Catholic University’s Columbus School of Law, please visit http://law.cua.edu
Among his many accomplishments, Professor Christopher Cotropia joined the faculty at the University of Richmond School of Law in 2006, practiced law in Washington, D.C., at the firm of Fish & Richardson, and was law clerk for the Honorable Alvin A. Schall, United States Court of Appeals for the Federal Circuit. Professor Cotropia obtained his J.D. with honors from theUniversity of Texas School of Law, and earned a B.S with honors and distinction in both computer engineering and electrical engineering from Northwestern University
Professor Cotropia has published a bounty of writings, some of which include:
The Upside of Intellectual Property's Downside, 57 UCLA L. REV. 921 (2010) (coauthored with Jim Gibson).
The Folly of Early Filing in Patent Law, 61 HASTINGS L. J. 65 (2009).
Copying in Patent Law, 87 N. CAR. L. REV. 1421 (2009) (co-authored with Mark Lemley) (symposium—Frontiers of Empirical Patent Law Scholarship).
Nonobviousness and the Federal Circuit: An Empirical Analysis of Recent Case Law, 82 NOTRE DAME L. REV. 911 (2007).
Patent Law Viewed Through an Evidentiary Lens: The "Suggestion Test" as a Rule of Evidence, 2006 BYU L. REV. 1517.
Patent Claim Interpretation Methodologies and Their Claim Scope Paradigms, 47 WM. & MARY L. REV. 49 (2005).
Patent Claim Interpretation and Information Costs, 9 LEWIS & CLARK L. REV. 57 (2005) (symposium on Markman v. Westview Instruments).
Counterclaims, the Well-Pleaded Complaint, and Federal Jurisdiction, 33 HOFSTRA L. REV. 1 (2004).
For more information on Chris Cotropia and the University of Richmond School of Law, please click here.
Author of 'The Eyes of Willie McGee: A Tragedy of Race, Sex and Secrets in the Jim Crow South
Alex Heard tells Intellirights’ Jen Richer of his compelling non-fiction account of the trial of Willie McGee, an African American executed in 1951 after being convicting of raping a white housewife in Mississippi. Heard paints a stirring picture of how McGee was sent to the electric chair while the state of Mississippi was raging in the heat of racial hatred. The author is clear in pointing out that, while Willie McGee’s case raises similar themes of black and white in a divided Deep South, this story is no To Kill a Mockingbird. As Heard explains, many viewed McGee unsympathetically because his legal team, which included civil rights defender Bella Abzug, had links to the Communist Party of the United States. Heard points out that, despite McGee’s attorneys claim that his relationship with the alleged white victim was a consensual love affair, the political implications forced the National Association for the Advancement of Colored People (NAACP) to steer clear of his case. History may never reveal the truth of McGee’s guilt or innocence, but Heard gives a reader much to consider in looking back at 1950s America.
Intellirights sincerely thanks Alex Heard and publisher HarperCollins for this interview. The Eyes of Willie McGee is widely available, and may be purchased here.
Visit Alex Heard’s blog at www.eyesofwilliemcgee.com.