Fraud and Enforceability: Potential Implications for Federal Circuit Litigation

By: Michael Kim Should fraudulent litigation tactics and testimony affect the validity of underlying patents? What results are possible if the enforceability of a patent turns on the conduct of the applying party not only before the Patent and Trademark Office, but also before circuit courts? The author of the following article considers these questions in light of the recent Aptix Corp. case. Download Full Article (PDF) Cite: 2002 Duke L. & Tech. Rev. 0001

Facilitating Access of Aids Drugs While Maintaining Strong Patent Protection

By: Dana Ziker The AIDS pandemic has thrust the subject of patent protection into the spotlight, a spotlight that has attracted the attention of broad audience including interested parties from the political, legal, and medical communities. Can the United States’ scheme of strong patent protection for pharmaceutical products withstand the increased attention? Download Full Article (PDF) Cite: 2001 Duke L. & Tech. Rev. 0042

Cybernetic Implications for the U.C.C.

By: Stephen Dirksen & Kyle Grimshaw In the following iBrief, the authors assess the impact of recent a recent decision from the 9th Circuit assessing whether the patent system’s filing mechanism preempts the U.C.C. Article 9 requirement that creditors perfect their security interests in patents offered as collateral by their debtors. Download Full Article (PDF) Cite: 2001 Duke L. & Tech. Rev. 0040

A Victory for the Student Researcher: Chou v. University of Chicago

By: Kyle Grimshaw For years, graduate and other student researchers at universities have alleged that the hierarchical system in academic research allows supervising PhDs to steal and patent inventions that were rightfully discovered by students. In July 2001, the Federal Circuit finally addressed these concerns by interpreting the law in a way that strictly protects the rights of student researchers. This article examines this long-overdue change in the law and discusses its potential implications. Download Full Article (PDF) Cite: 2001 Duke L. & Tech. Rev. 0035

International Upheaval: Patent Independence Protectionists and the Hague Conference

By: Kyle Grimshaw International lawmakers presently are negotiating a treaty that would not only allow U.S. courts to grant summary judgment in patent infringement suits if a court in Canada or Europe previously found patent infringement, but would actually require it. This paper examines whether courts in the United States should be allowed to find patent infringement based solely upon the fact that foreign courts had previously found patent infringement. The author concludes that changing the law to allow this practice is not sound policy. Download Full Article (PDF) Cite: 2001 Duke L. & Tech. Rev. 0020

Patent Amendments and Prosecution History Estoppel Under Festo

By: Stephen Dirksen, Kyle Grimshaw, Michael Hostetler, Michael Kim & Steven Mesnick On November 29, 2000, the Federal Circuit retroactively reduced the value of nearly 1.2 million unexpired United States patents by announcing a new rule for the somewhat obscure doctrine of prosecution history estoppel. Designed to foster clarity in patent applications, this new pronouncement in Festo Corp v. Shoketsu Kinzoku Kogyo Kabushiki Co. allows for easy copying of some patented inventions and reduces patent owner’s ability to prove infringement. This article outlines the change in the law and discusses the positive and negative consequences of the decision. Download Full Article (PDF) Cite: 2001 Duke L. & Tech. Rev. 0011

Who’s Afraid of v.

By: Stephen Dirksen, Kyle Grimshaw, Michael Hostetler, Ian Jinkerson & Michael Kim On October 2, 2000, the Court of Appeals for the Federal Circuit heard the appeal in the case of, Inc. v., Inc. This appeal revolves around the alleged infringement by of a one-click web-shopping system patented by The one-click system is among a series of recent controversial “business method” patents. According to some, business methods are legitimate inventions that deserve the protection of the US Patent and Trademark Office (PTO). According to others, business methods are unworthy of patent protection and may inhibit innovation in e-commerce. The outcome of this case has been widely anticipated by both sides of the business method patent debate as a signal that these patents will or will not be upheld by courts. Download Full Article (PDF) Cite: 2001 Duke L. & Tech. Rev. 0003

Deutsche Telekom and Voicestream Merger: Charting a New Regulatory Course

By: Aaron Futch, Yemi Giwa, Andrew Grimmig, Kisa Mlela & Amy Richardson On July 24, 2000, the German telecommunications giant Deutsche Telekom AG (Deutche Telekom) agreed to purchase the Bellvue, Washington based VoiceStream Wireless Corporation (VoiceStream) for over $50 billion. Although the merger may ultimately fall through, the response generated by the proposed merger indicates the future for deals between US and foreign-owned telecommunications companies. With the increasing globalization of the world’s telecommunications markets, the Deutche Telekom deal represents the first time that a company dominated by a foreign government has attempted to purchase an American corporation. The signatories of the Basic Telecommunications Agreement, an agreement among World Trade Organization (WTO) members to open their telecom markets to foreign competition, are closely watching the US response. The stance that the US government takes in reviewing this merger can be seen as a sign of things to come as the world’s single largest telecommunications market opens up to the world. Download Full Article (PDF) Cite: 2001 Duke L. & Tech. Rev. 0004