William L. LaFuze
Section Chair, 2004–05

This is my second Chair’s letter. So many projects of interest and incredible importance are in the works that it seems like only yesterday that I wrote last month’s Chair’s letter! This year will certainly not suffer from lack of interesting and important projects.
At the outset, I would like to express my sincere and deep appreciation to the volunteers in the Section leadership who are making things happen. The Section is blessed with a large stable of super lawyers who have not only demonstrated ability at the highest level, but also unselfishness in devoting huge chunks of their time to a wide variety of projects that contribute to the overall improvement of the intellectual property systems that benefit our profession and our country. Many, many thanks to you all!
Next, I would like to briefly cover only a few of the many activities and important projects that are underway in the Section.
First, our committees are being reconstituted with fresh talent. In order to ensure that all members of our committees are willing to serve and actively participate in our committee projects, our committee rosters have been wiped clean in order to begin anew with members genuinely willing to participate and serve. If you were a committee member last year and wish to continue, or if you would like to serve the Section in committee service during the coming year, you must complete and fax a committee preference form to Section offices in Chicago, if you have not already done so. The form may be found at www.abanet.org/intelprop/bulletin/committee_form.doc. If you wish to make a significant contribution to your profession, please sign up for committee service today!

Next, Donald Dunner and Richard Rainey have been hard at work spearheading the effort to author and file an amicus brief on behalf of the ABA in the case of Phillips v. AWH Corp. In the Phillips case, the Federal Circuit has invited amicus briefing on a number of very important claim construction issues. (See Issues, Exhibit A). The opinion of the Federal Circuit in this case is expected to clarify the law which will hopefully bring much greater certainty to establishing the boundaries of patents so that patent owners and potential infringers can have improved ability in business planning, with attendant less litigation and cost.
Next, as I believe many of our members are aware, for the last decade or so, the Department of Commerce has diverted about $800 million, according to some computations, from fees paid by users of the U.S. Patent and Trademark Office to other agencies within the U.S. Department of Commerce. This money was intended to be used for operations of the PTO. A primary goal of the Section and the ABA is to end patent fee diversion to ensure that the PTO receives the funds it needs to operate in a manner that provides first-quality service in a timely manner. There have been recent developments in which the Senate Appropriations Committee has suggested that certain aspects of the Fee Bill be tacked onto an appropriations bill, but without the guarantees that the ABA has been seeking to prevent diversion. On behalf of the ABA, two letters to various Senators and the Appropriations committee have been written and were sent on September 14, 2004, opposing this course of action. These can be found at www.abanet.org/intelprop/bulletin/Hatch_Leahy.doc and www.abanet.org/intelprop/bulletin/Patent_Trademark_Act.doc respectively.
Of significant importance is the view of the Section and the ABA on the so-called Weldon Amendment. The House appropriation bill would prohibit the use of funds appropriated by the Act to issue patents on claims directed to or encompassing a human organism. The ABA opposes the Weldon amendment because it does not believe that patent laws should be modified through indirect means such as funding restrictions. Changes to basic principles of patent law, such as those in the Weldon amendment restricting patentable subject matter, should only be adopted after hearings and other appropriate consideration by the Senate and House committees with subject matter jurisdiction and expertise. The fact that these potentially significant changes in the scope of patentable subject matter are made by a funding restriction rather than by a substantive amendment to patent law presents an additional dimension of uncertainty and likelihood of litigation. The full text of my letter to several influential Senators on the Senate Appropriations Committee dated September 14, 2004 is accessible at www.abanet.org/intelprop/bulletin/Weldon_Senate.pdf.
Also, the National Academy of Sciences (NAS) has completed a four-year study of the U.S. patent system. The NAS recently delivered a final report, which proposes comprehensive and sweeping substantive changes to the U.S. patent system. I have appointed a Task Force, headed by Don Martens (dmartens@kmob.com), to analyze the many changes proposed by NAS and make recommendations to the Section Council in the form of a report and resolutions to implement those changes that are deemed by the Section to improve the patent system. Many thanks to Don for agreeing to head this important Task Force. Other members of Don’s Task Force are Jeff Kushan, Samson Helfgott, Larry Welch, Donna Meuth, Collin Webb, Gary Griswold, Hollie Baker, Robert Armitage, and Don Dunner.
Finally, the next apparent sequel to the legality of file sharing and transfer of copyrighted works has been raised in the Grokster case, an apparent next step in analyzing the application of copyright laws to the use of new technology after the Napster case. This case has inspired the introduction of the Induce Act to try to legislate a solution to the issues posed in Grokster. In view of this situation, and the importance of the Section in taking a leadership role in the ABA on these important issues, I have appointed a Task Force, to be chaired by Donna Bergsgaard (donna.bergsgaard@thompson.com) to study the Induce Act and prepare resolutions and a report to be considered by the Section Council. Other members of the Induce Act Task Force are: Fred Koenigsberg, Judy Saffer, Ralph Oman, Joan McGivern, David Einhorn, Kate Spelman, Lisa Dunner, and Erich Andersen.
Stay tuned for more news as this promises to be a busy year for the Section of Intellectual Property Law with many important matters on our plate.

Exhibit A
ISSUES IN PHILLIPS v. AWH CORP.
In the Phillips case, the court requested briefing from the bar on the following claim construction issues:
1) Is the public notice function of patent claims better served by referencing primarily to technical and general-purpose dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee’s use of the term in the specification?  If both sources are to be consulted, in what order should they be?
2) If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope? If so, what language in the specification will satisfy those conditions? What use should be made of general as opposed to technical dictionaries? How does the concept of ordinary meaning apply if there are multiple dictionary definitions of the same term? If the dictionary provides multiple potentially applicable definitions for a term, is it appropriate to look to the specification to determine what definition or definitions should apply?
3) If the primary source for claim construction should be the specification, what use should be made of dictionaries? Should the range of the ordinary meaning of claim language be limited to the scope of the invention disclosed in the specification, for example, when only a single embodiment is disclosed and no other indications of breadth are disclosed?
4) Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?
5) When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102, 103 and 112?
6) What role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms?
7) Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?

 

Senate Appropriators Vote to Increase PTO Fees and Funding; No Fix for Diversion

Hayden W. Gregory
Legislative Consultant

On September 15, the Senate Appropriations Committee favorably reported S. 2809, an appropriations bill that would substantially increase PTO funding, as a result of also substantially increasing PTO user fees.
S. 2809 calls for PTO funding of $1,356,000,000 in FY 2005 if no additional revenue is made available through enactment of pending legislation to increase PTO user fees. The bill calls for the appropriation to be increased by an additional amount up to $208,754,000 if fees increases are enacted. The House-passed Appropriations Act, H.R.4754, calls for similar two-step funding for the Office. If no fee increases are enacted, the H.R. 4754 PTO appropriation would be $1,314,653.000. If fee increases are enacted, an additional amount up to $218,754,000 would be added.
The PTO appropriation for the current fiscal year is $1,222,460,000.
Unlike the House appropriations bill, which leaves the availability of the second step of PTO funding up to the fate of separate fee legislation such as H.R. 1561, the Senate appropriators propose the unusual step of raising fees in the appropriations bill. S. 2809 would enact, for one year, the fee increases called for in the House-passed fee bill, H.R. 1561. The ABA and the Section support the passage of H.R. 1561, but only if the bill contains provisions adequate to stop diversion of PTO user fees to fund unrelated programs. S. 2809 does not contain anti-diversion language such as that found in section 5 of H.R. 1561, which the ABA and the Section believe to be effective to stop diversion. In a letter to the Committee on September 14, Robert D. Evans, Director of the ABA Governmental Affairs Office, expressed ABA opposition, as recommended by the Section, to the enactment of fee increases without also enacting anti-diversion provisions.
S. 2809 does not contain the ban on patenting of human organisms that is found in H.R. 4754. Section Chair Bill LaFuze wrote to the Appropriations Committee on September 14, expressing ABA opposition to inclusion of this ban in the Senate bill.
S. 2809 now moves to the Senate floor. After Senate passage, a Conference Committee will be convened to reconcile the differences between the two bills.

Committee News

Committee 103 – Ex Parte Patent and Trademark Office Affairs – Patents

Donna M. Meuth and Collin Webb, Committee Co-Chairs

Committee 103 – Ex Parte Patent and Trademark Office Affairs – Patents, is planning for another busy year. As has been the tradition, the committee will prepare comments on behalf of the Section to respond to proposed rulemakings by the Patent Office relating to ex parte prosecution. Even in the absence of any proposed rulemakings, the committee plans to review various requirements and propose changes to rules relating to ex parte prosecution. For example, the committee plans to study 37 CFR §§ 97 and 98 to determine whether the requirement to provide copies of unpublished patent applications is obsolete in light of the Image File Wrapper system. Other changes relating to the Patent Office’s move towards electronic files will also be examined. In addition, the committee may study requirements for foreign priority, in particular, practice relating to the requirement for a certified copy of priority documents.
The committee is also interested in acting on the interests and guidance of its members. If a Section member who is not currently a member of the committee would like to have a role in affecting ABA policy, Committee 103 welcomes additional members and ideas. Contact committee co-chairs Collin Webb, collin.webb@cnh.com or Donna Meuth, donna.meuth@wilmerhale.com, for further information.

 

Committee 603 – International Trade Commissions

Steven Gardner and Jeannine Y. Sano, Committee Co-Chairs

The first meeting in the 2004-05 term of Committee 603 – International Trade Commissions (ITC), took place on September 7, with four members in attendance. We have four new members that have signed up for this year, and we are continuing to work on increasing participation as well as the visibility of the Committee.
While the ITC continues to be an active forum for patent litigation, awareness of the ITC and the available remedies from Section 337 actions (19 U.S.C. § 1337, as amended) seems to be somewhat limited among litigators (apart from those who specialize in this type of action), despite the many similarities with district court patent litigation practice. With judges that are well-versed in patent law and technology issues and the absence of a jury, the ITC remains the closest thing to a specialized court for intellectual property litigation, with increasing likelihood of “taking the case to trial,” which in the ITC is an administrative hearing similar to a bench trial.
The ITC Committee, along with several other committees in the Litigation and Intellectual Property Law Sections, will be reviewing potential changes in the law looming in the Federal Circuit on claim construction and adverse inference issues (Phillips and Knorr-Bremse cases). Among the items discussed at the first ITC Committee meeting were the upcoming Litigation and Intellectual Property Section meetings in 2005, possible presentations by ITC Committee members at those and other ABA meetings, and other activities in which the ITC Committee may engage during this term.

Upcoming Section Teleconference

Join the American Bar Association and the Section of Intellectual Property Law for this NEW TeleConference Series CLE, “Recent Developments in Copyright Law: MGM v. Grokster and the future of Internet file-sharing.”
 One of the most publicized issues in copyright and Internet law involves the trafficking in copyrighted content, such as music files, through peer-to-peer (P2P) networks. Recently, the entertainment industry suffered a reversal when the Ninth Circuit, in MGM v. Grokster, Ltd.,affirmed a lower court judgment dismissing claims of contributory and vicarious infringement against providers of software that establishes the “next generation” of P2P networks on which copyrighted material is exchanged. The Grokster decisionnot only represents a setback for the entertainment industry as it tries to grapple with the problem of online infringement, but also opens the door for Supreme Court review of the legal status of P2P networks. Michael Page, who represented Grokster, and Matthew Oppenheim, who represented the Recording Industry Association of America, will analyze the legal issues that were before the Grokster court, the Court’s decision and its impact, and the future of file-sharing.

$85 for Members of the Section of Intellectual Property Law
$125 for ABA Members
$150 for all other registrants
Additional registrants who use the same phone line pay only $60. 

The teleconference will take place Thursday, October 21, 2004, 1:00 p.m. - 2:30 p.m. EDT.

***States Not Accrediting ABA TeleConferences: DE, IN, PA, KS, OH

Register:
Online at http://www.abanet.org/cle/programs.t04cll.html
By Phone: 800-285-2221 and Select Option “2,” M-F, 8:30 a.m. - 6:30 p.m. EDT.

Reminder: Turn in Your Committee Preference Forms

For the new Association year, 2004-2005, the Section of Intellectual Property Law is cleaning its membership rosters. All Section members are encouraged to join and actively participate in the committee activities of the Section. All members were mailed a committee preference form via U.S. mail in August.
Committee members from last year will not be carried over automatically to the rosters for the new year, so you are urged to complete your form and send it back in order to be included in the roster of the committee of your choice. The form also may be found at www.abanet.org/intelprop/bulletin/committee_form.doc.

Practical Tips Program to Feature Judge Gorton
Hon. Nathaniel M. Gorton of the U.S. District Court for the District of Massachusetts will be the featured luncheon speaker at the program “Practical Tips on Enforcing and Defending Patents,” October 22 at Suffolk University Law School in Boston.
Judge Gorton will be joined by a distinguished group of panelists who will present topics that focus on the enforcement and defense of patents in court.
The Practical Tips program, now in its seventh year, has been well received in cities throughout the nation. It is designed to enhance intellectual property practice skills and enable IP practitioners to handle the many tasks that routinely arise in this increasingly important area of practice. Speakers will present practical advice on dealing with the “nuts and bolts” of everyday IP practice.
Top professionals in the IP field will be featured, including George F. Wheeler of McAndrews, Held & Malloy, Ltd., Chicago, IL; Todd R. Walters, Burns, Doane, Swecker & Mathis, LLP, Alexandria, VA; Steven Gardner, Kilpatrick Stockton LLP, Winston-Salem, NC; Jeanne M. Gills, Foley & Lardner LLP, Chicago, IL; James R. Kyper, Kirkpatrick & Lockhart LLP, Pittsburgh, PA; Gregory S. Norrod, Foley & Lardner LLP, Chicago, IL; Denise W. DeFranco, Foley Hoag LLP, Boston, MA; Edward V. Filardi, Skadden, Arps, Slate, Meagher & Flom LLP, New York, NY; Philip C. Swain, Foley Hoag LLP, Boston, MA; Steven M. Bauer, Proskauer Rose LLP, Boston, MA; Richard L. Rainey, Fish & Neave, Washington, DC; and Kenneth R. Adamo, Jones Day, Cleveland, OH.
Robert Smith, Dean of the Suffolk University Law School, will deliver welcoming remarks.

The program is sponsored by the Young Lawyers Committee of the ABA Section of Intellectual Property Law in cooperation with Suffolk University Law School and the Boston Patent Law Association

Continuing Legal Education credit will be available. For further details, and to register for this one-day program, visit www.abanet.org/
intelprop/2004ptips_boston, or call 312-988-5598.

Mark Your Calendar—

 

Practical Tips on Enforcing and Defending Patents
October 22, 2004
Suffolk University Law School
Boston, MA

20th Annual Intellectual Property Law Conference
April 14-16, 2005
Crystal Gateway Marriot Hotel
Arlington, VA

2005 Summer IPL Conference
June 22-26, 2005
Palace Hotel
San Francisco, CA