Patent Law

Foley attorney Hal Wegner regularly updates his list of the top-ten most important pending patent cases ranked according to their likely impact on the law. The list follows with my own annotations.

1. Ariad v. Eli Lilly: This en banc case is fully briefed and pending decision on the question of whether the written description requirement of Section 112 should be considered separate and distinct from the enablement requirement. In many ways, the case is about how the law should define the inventor's "possession" of the invention.
2. I4i v. Microsoft: A petition for en banc rehearing has been filed on issues of damages and injunctive relief.
3. Mayo v. Prometheus: This case is on petition for certiorari to the Supreme Court on the question of patentable subject matter for medical diagnostic methods. It has the potential to be a Bilski follow-on.
4. Bilski v. Kappos: This patentable subject matter case is pending decision at the Supreme Court.
5. Pequignot v. Solo Cup: Question of intent necessary for false marking charges.
6. Microsoft v. Lucent: Microsoft is expected to file a petition for certiorari on the "clear and convincing" standard required for invalidating a patent. Microsoft argues that the standard should be lowered when the most pertinent prior art was not considered during patent prosecution.
7. Arkansas Carpenters: The Second Circuit is scheduled to sit en banc to consider whether a "reverse payment" from a patentee to an ANDA generic challenger to settle a patent challenge should be considered an antitrust violation.
8. Costco v. Omega: This case is pending certiorari with an outstanding request for the views of the Obama administration. The case raises an important question of copyright exhaustion in the context of authorized sales of copyrighted material on foreign soil. If decided by the Supreme Court, the case will likely impact patent doctrine.
9. Princo v. ITC: En banc argument is scheduled for March 3, 2010 on the contours of antitrust and patent misuse in the standard-setting processes.
10. Acushnet v. Callaway: Whether the legal determination of obviousness should be made by a judge ? rendering a jury's conclusion on that question "entirely advisory."