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American Intellectual Property
Law Association
Positions in Amicus Curiae Briefs

Procedure for Requesting AIPLA Amicus Participation in a Pending Case (html) or PDF Version

TiVo, Inc. v. EchoStar Corp., Fed. Cir. No. 2009-1374, filed August 2, 2010.

AIPLA, in an August 2, 2010, amicus brief supporting neither party, argues to the en banc Federal Circuit that courts should continue to apply KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985), in considering requests for contempt orders, asking (1) whether a contempt proceeding is appropriate and (2) whether the injunction has been violated in a way that requires a contempt finding. The brief also argues that a contempt finding must be supported by clear and convincing evidence, that good faith is relevant only to a remedy and not to the finding of a violation, that contempt liability should not arise from objectively ambiguous injunctions, and that a district court in equity has the discretion to enjoin conduct beyond that which was specifically adjudicated as infringing..


Therasense, Inc. v. Becton, Dickinson & Co., Fed. Cir. No. 2008-1511, filed August 2, 2010.

AIPLA, in an August 2, 2010, amicus brief supporting neither party, argues to the en banc Federal Circuit that the basis for a finding of inequitable conduct should be fraud on the PTO, provable only with specific intent to deceive. In addition, the brief maintains that materiality should be found only where at least one claim would not have issued "but for" the alleged misconduct, and that limits on inequitable conduct are justified by the severe penalty of unenforceability.


Costco Wholesale Corp. v. Omega, S.A., U.S., No. 08-1423, filed July 8, 2010.

AIPLA, in a July 8, 2010, amicus brief supporting neither party, argues to the Supreme Court that the Ninth Circuit erred in ruling that the availability of copyright first sale defense depends on where a copyrighted item is made. However, the brief takes no position on the ultimate result in this case, and instead asks the Court for better guidance on the applicability of the first sale defense in the context of unauthorized imports where the first sale occurs abroad. The case involves the importation of Swiss-made watches bearing a copyrighted logo which was allegedly infringed by the importation of the watches.


Beer v. U.S., U.S., No. 09-1395, filed June 14, 2010.

AIPLA, in a June 14, 2010, amicus brief filed jointly with other bar associations in support of petitioners, argues to the Supreme Court that the Federal Circuit erred in affirming the dismissal by the U.S. Court of Federal Claims of a suit claiming that Congress has violated the "Compensation Clause" of the Constitution (Article III, Section 1) by failing to provide federal judges with cost-of-living salary increases. According to the brief, the Federal Circuit misinterpreted the Ethics Reform Act of 1989 by refusing to construe the automatic COLA increases as “vested” for purposes of the Compensation Clause.


Richardson v. Stanley Works, Inc., Fed. Cir., No. 2007-1386, filed April 22, 2010.

AIPLA, in an April 22, 2010, amicus brief supporting a petition for en banc review, argues to the Federal Circuit that design patents protect the claimed overall appearance of an article of manufacture, regardless of whether the constituent elements of the claimed design are functional or ornamental. According to the brief, the panel erred in affirming a district court claim construction of a design patent which disregarded features determined to be "functional" as a matter of law, namely the hammer head, the crowbar, the nail claw and the jaw. The brief maintains that the Federal Circuit incorrectly reasoned that design patent claim construction requires that functional features be identified, separated out and disregarded.


Hyatt v. Kappos, en banc Fed. Cir., No. 2007-1066, filed April 9, 2010.

AIPLA, in an April 9, 2010, amicus brief, argued to the en banc Federal Circuit that a plaintiff in a district court action against the Patent and Trademark Office under 35 U.S.C. §145 to challenge a refusal to grant a patent is not barred by the Administrative Procedure Act from presenting new evidence beyond that contained in the agency record. The brief was filed in a case where the district court refused to permit an inventor’s declaration to be admitted with an opposition to a PTO summary judgment because the inventor “negligently” failed to present the evidence in the declaration to the PTO in the proceedings below. The AIPLA brief urged the Court to re-assert its precedent that §145 proceedings are de novo with respect to new evidence presented by either party in connection with issues raised with the PTO. In addition, it argued that the limits on presenting evidence in §145 proceedings are found in the Federal Rules of Evidence, the Federal Rules of Civil Procedure, and traditional principles of equity, and that the evidence issue in this case should be remanded for fact findings under the correct evidentiary standard.


SEB S.A. v. Montgomery Ward & Co., Fed. Cir., No. 2009-1099, filed March 15, 2010.

AIPLA, in a March 15, 2010 amicus brief, filed jointly with the Federal Circuit Bar Association in support of an en banc petition, argues that the en banc Court should clarify the culpable state of mind required to prove liability for inducing patent infringement. According to the brief, the “deliberate indifference” standard recited by the panel in this case adds another layer of uncertainty of the relevant mental state, which has at various times been called specific intent, knowing conduct, recklessness and negligence. According to the brief, the Court should supply a unified legal standard for proving a culpable state of mind for finding of induced infringement.


Princo Corp. v. U.S. International Trade Commission, en banc Fed. Cir., No. 2007-1386, filed December 4, 2009.

AIPLA, in a December 4, 2009 amicus brief, argues to the en banc Federal Circuit that patent misuse allegations arising from license restrictions on pooled patents must be analyzed under a “rule of reason” approach. The brief addresses the question of whether a finding that there was no illegal tying resulting from the pooled patent agreements precludes antitrust liability for an agreement not to license outside the patent pool a particular patent on allegedly competing technology. According to the brief, this question must be decided under a "rule of reason" analysis and not on a per se basis. It also urges that the Court clearly place the burden of proving anticompetitive effect under the rule of reason on the party invoking the patent misuse defense or asserting antitrust claims (in this case, Princo).


Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.,, en banc Fed. Cir., No. 2008-1248, filed November 19, 2009.

AIPLA, in a November 19, 2009 amicus brief, argues that Section 112, ¶1 of the Patent Act contains a written description requirement that is distinct from, but related to, an enablement requirement. It further argues that the purpose and scope of the written description requirement is to act in concert with the other requirements of Section 112 to advance the disclosure objectives of the patent system. In the patent validity context, the requirement should be applied not as an independent measure of compliance with the disclosure requirement of Section 112, but together with the other specification requirements of enablement under Section 112, ¶1, and identification of the invention in the claims under Section 112, ¶2. Compliance with Section 112 should therefore be judged by the sufficiency of the disclosures as a whole, not by the sufficiency of the disclosure under any one requirement.


Bayer Schering Pharma AG v. Barr Laboratories, Fed. Cir., No. 2008-1282, filed September 28, 2009.

AIPLA, in a September 28, 2009 amicus brief, supports a petition for en banc review of a Federal Circuit panel ruling that a “viable alternative” in a prior art rendered a patented method “obvious to try” and thus invalid under Section 103 of the Patent Act. The AIPLA brief seeks a clarification of the obvious-to-try analysis in light of KSR. It argues that the introduction of “a viable alternative” test confuses the analysis and undermines the requirement of KSR that the prior art alternative be a “predictable” solution. The panel majority’s conclusion that the option in this case was “viable” appears to have been based on hindsight reasoning that was based upon the very work that produced the invention.


Agilent Technologies, Inc. v. Affymetrix, Inc., Federal Circuit, filed August 18, 2009.

AIPLA, in an August 18, 2009 amicus brief, supported a petition for en banc review of a Federal Circuit panel ruling on claim construction in interferences. According to the brief, the panel incorrectly required consideration of the specification of the copied patent to decide written description issues, and consideration of the specification of the copying application to decide patentability over the prior art. The brief argues that the panel applied an obsolete rule that dates back to a period before issues of validity and priority were merged into a single proceeding.


Bilski v. Doll, Supreme Court, filed Aug. 6, 2009.

AIPLA, in an August 6, 2009 merits amicus brief, argued to the Supreme Court that the Federal Circuit's "machine or transformation" test for the subject matter eligibility for process patent protection ignores the clear Congressional intent that any process be patent-eligible and misinterprets Supreme Court precedent. According to the brief, this test is derived from dictum in Supreme Court case law and is tied to the vocabulary of technologies developed in earlier ages. As such, it is backward-looking and ill-fitted to future discoveries and technologies as yet unimagined.


Shire LLC v. Sandoz, Inc., Federal Circuit, filed July 22, 2009.

AIPLA, in a July 22, 2009 amicus brief, argued to the Federal Circuit that issue preclusion should not be applied in a per se fashion to automatically bar subsequent courts from making their own independent claim interpretation and to automatically bind later infringement proceedings to prior district court claim constructions. Rather, district courts should apply issue preclusion to claim construction in the same fashion it is applied to other issues, according to the brief, with flexibility and discretion after analyzing the relevant factors on a case-by-case basis, according to the brief.


Tafas v. Doll, Federal Circuit, filed June 17, 2009.

AIPLA, in a June 17, 2009 amicus brief, argued to the Federal Circuit that a panel of the court applied the incorrect test in determining that PTO had statutory authority to issue rules limiting patent claiming practice. Urging en banc review of the 2-1 panel decision, the brief argued that the panel's conclusion that the rules were procedural and non-substantive inadequately considered the impact which the rules will have on rights and obligations of patent applicants under the Supreme Court's ruling in Chrysler Corp. v. Brown.


Reed Elsevier, Inc. v. Muchnick, Supreme Court, filed June 8, 2009.

AIPLA, in a June 8, 2009 amicus brief argued to the Supreme Court that the Second Circuit in this case misinterpreted 17 U.S.C. § 411(a) by treating the requirement of copyright registration as a condition precedent to subject matter jurisdiction over an action for copyright infringement. On this basis, it incorrectly barred an action for infringement where some of the works in suit had been registered at the Copyright Office and some had not.


Cardiac Pacemakers Inc. v. St. Jude Medical Inc., Federal Circuit en banc, filed April 15, 2009.

AIPLA, in an April 15, 2009 amicus brief filed jointly with the Federal Circuit Bar Association, argued to the en banc Federal Circuit that 35 U.S.C. §271(f), barring the supply of components abroad for combination into a device that infringes a patented invention, does not apply to process claims. The brief argues that the panel ruling to the contrary in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005), must be overturned as inconsistent with precedent, as based on an incorrect statutory construction, as inconsistent with the legislative history of the statute, and as substantially undermined by Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007).


Bilski v. Doll, , Supreme Court, U.S. No. 08-964, supporting cert. pet., filed March 2, 2009.

AIPLA, in a March 2, 2009 amicus brief filed in support of a petition for certiorari, argued to the Supreme Court that the en banc Federal Circuit's recently announced "machine or transformation" requirement for determining the patent eligibility under 35 U.S.C. 101 of process inventions misinterprets Supreme Court precedents and unwisely reduces incentives for new types of innovation. The brief points out that the controlling standards for this question are found in legislative history and in case law that excludes claims to laws of nature, natural phenomena, and abstract ideas, and that there is no logical connection between these criteria and an invention's connection to a machine or its transformation of some material. According to the brief, the Federal Circuit test is backward looking and will restrict rather than promote new innovative technologies, whereas the Patent Act and Supreme Court precedent uniformly reflect a wise openness to the unanticipated innovations of the future.


Cardiac Pacemakers Inc. v. St. Jude Medical Inc., Federal Circuit, filed January 30, 2009.

AIPLA, in a January 30, 2009 amicus brief filed jointly with the Federal Circuit Bar Association, argued to the Federal Circuit that that 35 U.S.C. §271(f), barring the supply of components abroad for combination into a device that infringes a patented invention, does not apply to process claims. The brief argues that the panel ruling to the contrary in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005), must be overturned as inconsistent with precedent, as based on an incorrect statutory construction, as inconsistent with the legislative history of the statute, and as substantially undermined by Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007)


Prometheus Laboratories, Inc. v. Mayo Collaberative Services, Federal Circuit, filed January 22, 2009.

AIPLA, in a January 22, 2009 amicus brief argued to the Federal Circuit that the district court improperly applied 35 U.S.C. 101 to find no patent-eligible subject matter in claims to a method used in treating Crohn's disease. The brief argues (1) that the claimed methods meet the machine-or-transformation test in Bilski, (2) that the district court overreacted to the dissenting opinion in the Supreme Court's Lab. Corp decision, and (3) that this case is distinguishable from other decisions finding no patent-eligible subject matter.


Hualapai Tribe v. Grand Canyon West Ranch LLC, Federal Circuit,, filed December 12, 2008

AIPLA on December 17, 2008, entered another appeal at the Federal Circuit from a Trademark Trial and Appeal Board to object to findings of fraud that ignore the element of deceptive intent, The AIPLA amicus brief in support of appellant tracks the association’s September 11, 2008 brief filed in the pending Bose Corp. v. Hexawave, Inc., challenging the line of TTAB decisions starting with Medinol v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), which have found fraud and cancelled trademark registrations virtually no inquiry into deceptive intent.


Bose Corp. v. Hexawave, Inc., Federal Circuit,, filed October 11, 2008

AIPLA, in an October 11, 2008 amicus brief argued to the Federal Circuit that the Trademark Trial and Appeal Board has been improperly finding fraud and cancelling trademark registrations without sufficient evidence of deceptive intent. The brief argued that the Board disregarded the time-honored elements of fraud, made virtually no inquiry into deceptive intent, and failed to give any meaningful consideration to the elements of materiality and injury. The critical element of deceptive intent was replaced with a finding on the applicant’s knowledge, determined using the “knew or should have known standard.” The issue of materiality was disposed of in a single sentence stating that the affidavit of use would not have been accepted if the alleged defects were known. The brief notes that Federal Circuit patent decisions on inequitable conduct are instructive for the need to recognize appropriate limits on inferences of intent.


SmithKline Beecham Corp. v. Dudas, Federal Circuit, filed October 3, 2008

AIPLA, in an October 3, 2008 amicus brief supporting the appellee, urged the Federal Circuit to affirm the Final Judgment in TaJas v. Dudas, 541 F.Supp. 2d 805, 811 (E.D. Va. 2008), because the district court employed the correct analytical framework in assessing the true nature of the New Rules. The district court held that: (1) the rulemaking authority of the United States Patent & Trademark Office does not extend to substantive rules; (2) Final Rules limiting patent claiming and continuation application practices are substantive rules, and; (3) they thus are void.


Nuijten v. Dudas, Supreme Court, filed June 13, 2008

AIPLA, in a June 13, 2008 amicus brief supporting a petition for certiorari, urged the Supreme Court to review a Federal Circuit decision that a patent claim to a signal per se is not patentable subject matter under 35 U.S.C. §101. The brief maintains that the appellate court improperly restricted access to the patent system by adding new requirements to Section 101 that patent-eligible manufactures be non-transitory, tangible articles that are perceived without special equipment. The decision lacks support in the Constitution, the Patent Statute, and Supreme Court precedent, and would deny access to the patent system for signals and other important advances in technology that do not meet the new requirements, no matter how innovative, unique, or useful they may be. This restricive reading of the otherwise expansive statutory subject matter categories, according to the brief, threatens the delicate balance of innovation, investment, commercialization, and movement of technology into the public domain that is produced by open access to the patent system.


In re Bilski, en banc Federal Circuit, filed April 7, 2008

AIPLA on April 7, 2008, filed an amicus brief with the en banc Federal Circuit, arguing that it is improper to apply the subject matter categories at 35 U.S.C. §101 narrowly to require that a process claim must be implemented by an apparatus in order to be patent-eligible under Section 101. According to the brief, Section 101 broadly encompasses anything under the sun made by man, and is limited only by the judicially-developed exclusions for laws of nature, physical phenomena, and abstract ideas. The brief maintains that this formulation provides a flexible rubric that promotes disclosure and adapts to yet unforeseen technologies, while retaining the safeguard against overbreadth in the traditional patentability requirements of novelty, non-obviousness, and sufficient disclosure to the public.


In re Volkswagen AG, en banc Fifth Circuit, filed March 26, 2008

AIPLA on March 26, 2008, filed an amicus brief in an en banc Fifth Circuit case, arguing that district courts in that circuit (particularly in the Eastern District of Texas) have been misapplying statutory transfer standards under 28 U.S.C. §1404. In this product liability arising out of a car accident in the Northern District of Texas but filed in the Eastern District of Texas, the defendant is seeking a writ of mandamus to overturn the denial of its transfer motion. The AIPLA brief focuses on the unjustifiable denials of legitimate transfer motions in patent cases brought in the Eastern District of Texas by parties who view it as a plaintiff-friendly venue but who have virtually no connection to the district.

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Egyptian Goddess, Inc. v. Swisa, Inc., en banc Fed. Cir., filed February 5, 2008

AIPLA in a February 5, 2008, amicus brief urged the en banc Federal Circuit to eliminate the "point of novelty" infringement test for design patent infringement cases. The brief argued that the proper test for infringement is the “ordinary observer” test to determine if the accused design is substantially similar to the claimed design. The Federal Circuit’s addition of a point of novelty test to the ordinary observer test, according to the brief, is both unworkable and undermines the presumption of validity created by the issuance of the patent.

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SmithKline Beecham Corp. v. Dudas, E.D. Va., filed 12/27/07

AIPLA in a December 27, 20007, amicus brief told the District Court for the Eastern District of Virginia that the retroactive application of PTO final rules changing continuation and claims practice punish applicants who complied with and made decisions based on established law. The brief was filed in support of the plaintiffs' request for a summary judgment that the rules as issued are improperly retroactive because they impair existing trade secret rights and impose new duties on completed transactions.

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Quanta Computer, Inc. v. LG Electronics, Inc., U.S. Sup. Ct., filed December 6, 2007 (45 pages)

AIPLA in a December 6, 2007, amicus brief urged the Supreme Court to apply the patent exhaustion doctrine in a way that does not preclude an infringement action against a purchaser where the sale made clear that downstream licenses are not being granted but rather must be separately negotiated. Thus, when an accused infringer has clear notice before entering into any purchase of potential liability as an infringer, his actions should not be exculpated. The effect of any such restrictions or conditions imposed by the patent owner or its licensees is not violative of the antitrust laws. Where these notice provisions are met, it should not matter whether the patent owner chose to maximize return by charging the parties at each level of supply an individualized royalty or by requiring a complete royalty payment from the first licensee (thereby exhausting patent rights). Whether the first transaction is a sale or license or covenant not to sue, it should not change these conditions or render a sale unauthorized.

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SmithKline Beecham Corp. v. Dudas, E.D. Va., filed 10/25/07

AIPLA in an October 25, 20007, amicus brief urged the District Court for the Eastern District of Virginia to grant plaintiff’s pending motion for a temporary retraining order and preliminary injunction to prevent the implementation of recent USPTO rules while the case proceeds on its merits, arguing the retroactive nature of the rules once implemented will cause irreparable harm to patent applicants throughout the country and over a wide spectrum of technologies. The brief addresses the irreparable harm caused by the retroactive impact of applying the new rules to pending patent applications, arguing those applications were filed, and substantial resources committed, in reliance on fundamental principles of patent law that have applied for more than a century. The brief argues that a delay in implementing the new rules pending resolution on the merits, by contrast, should not adversely impact PTO operations or policy.

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Egyptian Goddess, Inc. v. Swisa, Inc., Fed. Cir., filed October 9, 2007

AIPLA in an October 9, 2007, amicus brief urged the Federal Circuit to reconsider its ruling that the point of novelty that a design patent owner must identify in an infringement suit must be more than trivially different from design features in the prior art. According to the brief, this new rule defeats the statutory presumption of validity by requiring the patentee to prove non-obviousness after already satisfying the PTO on that issue. Supporting the patentee's request for a rehearing and rehearing en banc, the brief points out that the "points of novelty" test for proving infringement requires only a showing of "novelty."

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ITC Ltd. v. Punchgini, Inc., NY Ct. App, filed October 2, 2007

AIPLA in an October 2, 20007, amicus brief urged the New York Court of Appeals to recognize that New York common law recognizes the “well-known marks” doctrine, enabling the owner of a foreign mark that is well known, but not used in New York, to prevent unauthorized uses of its mark in a manner likely to confuse or deceive consumers. The case is in the New York high court upon the certification of questions from the Second Circuit, which concluded that the well-known marks doctrine is not encompassed by the Lanham Act.

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ITC Ltd. v. Punchgini, Inc., U.S. Sup. Ct., filed July 25, 2007 (28 pages)

AIPLA in a July 25, 20007, amicus brief urged Supreme Court review of a Second Circuit's decision that federal law does not recognize the "well-known marks" doctrine as an exception to the general territoriality rule that priority of trademark rights depends solely upon use in U.S. commerce. Under the well-known marks doctrine, according to the brief, a foreign mark's reputation in the United States supports its enforcement in U.S. courts even though that mark is not in use in the United States. Without taking a position on which party should prevail on the merits, the brief argued that the Second Circuit's decision on the well-known marks doctrine directly conflicts with the decision of the Ninth Circuit in Grupo Gigante S.A. De CV v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004), and should be reversed.

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In re Bilski, Fed. Cir., filed April 30, 2007 (32 pages)

AIPLA in an April 30, 2007, amicus brief argued to a Federal Circuit panel that the proper test for determining what constitutes statutory subject matter under 35 U.S.C. § 101 is set forth in Diamond v. Diehr, 450 U.S. 175 (1981). Specifically, the determination of whether a process claim incorporating an abstract idea is statutory subject matter depends on whether the claimed process, when viewed as a whole, recites a practical application with a useful result. While a transformation of physical subject matter from one state to another may be relevant in that determination, there should be no statutory subject matter requirement that claims incorporating abstract ideas include a strictly physical transformation.

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In re Seagate, filed March 19 2007 (40 pages)

AIPLA in a March 19, 2007, amicus brief argued to the en banc Federal Circuit that the standards for finding willful infringement should be reserved for infringers guilty of truly “reprehensible” conduct. The willfulness determination, according to the brief, should focus on subjective bad faith of accused infringers and apply the same criteria used for imposing punitive sanctions in other areas of tort law. On the subject of waiver, the brief explains that forcing disclosure of communications with trial counsel, not to mention trial counsel’s mental impressions and trial strategies, would effectively deny accused infringers effective assistance of counsel at trial. Facing such a harsh result, trial counsel would have no choice but to exclude clients from important strategic considerations.

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Microsoft Corp. v. AT&T, Corp., filed December 15, 2006 (26 pages)

AIPLA on December 15, 2006, filed an amicus brief in the Supreme Court, arguing that the Federal Circuit misinterpreted section 271(f) of the Patent Act as covering software copies made abroad from a master disk supplied from the United States. While the appellate court correctly concluded that software can be a "component" of a patented invention within the meaning of section 271(f), it incorrectly held that copying was "subsumed" in the act of supplying software, and that Section 271(f) liability for foreign-made copies is triggered by sending a single copy abroad with the intent that it be replicated.

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KSR Int'l v. Teleflex Inc., filed October 12, 2006 (30 pages)

AIPLA filed an amicus brief in the Supreme Court urging that proof of obviousness for a combination patent continue to require evidence that there was a reason—a teaching, suggestion, or motivation—for combining prior art in the manner claimed. The brief argues that the current, well-defined analytical framework draws upon principles found in Supreme Court case law and is of vital import to the patent system.

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Medimmune, Inc. v. Genentech, Inc., et al., filed July 26, 2006. (20 pages – 242KB)

The Court should affirm the Federal Circuit decision that a lack of sufficient immediacy and genuine adversity precluded Declaratory Judgment Act jurisdiction in this case, but should not adopt a bright-line rule that such jurisdiction for a licensee's challenge to patent validity requires the licensee to breach the patent license. A concrete and immediate dispute under the Constitution may also exist where the licensor and licensee engage in a legitimate debate over the validity or scope of the licensed patent rights, due to, for example, an unforeseen change in circumstances, and the licensor makes clear that it will promptly sue if the licensee fails to make timely payments according to its interpretation of the license.

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Lawman Armor Corporation v. Winner International, LLC and Winner Holding LLC, filed April 14, 2006. (17 pages – 269KB)

In its earlier decision, the CAFC stated that a novel combination of old elements is insufficient to constitute a design patent’s point of novelty. This could be interpreted to be a shift in well-settled design patent jurisprudence and at odds with previous CAFC decisions. AIPLA argues in this brief that the Court should clarify that the novel visual appearance of a combination of old elements can constitute a design patent’s point of novelty.

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Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., filed February 6, 2006. (28 pages – 393KB)

In an amicus brief, AIPLA argued that the Supreme Court should decline to consider issues of patentable subject matter suggested in the question for review but not raised or considered below. If the Court decides to consider this issue, it should leave unchanged the broad scope of patentable subject matter described in Diamond v. Diehr.

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eBay Inc. v. MercExchange, L.L.C., filed January 17, 2006 (34 pages – 98KB)

In a joint amicus brief to the Supreme Court, AIPLA and the Federal Circuit Bar Association argue that Federal Circuit’s “general rule” that a permanent injunction will normally issue in a patent case once validity and liability have been established is fully consistent with 35 U.S.C. §283 and is well-grounded in the traditional factors governing the issuance of injunctions. The brief further argues in favor of adhering to the Supreme Court’s 1908 ruling in Continental Paper Bag that permanent injunctions are available to patentees who do not make the product or use the process covered by the patent.

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Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., filed November 11, 2005 (18 pages – 1.2MB)

In a joint amicus brief to the Federal Circuit, AIPLA and the Federal Circuit Bar Association urge en banc reconsideration of Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., which applied 35 U.S.C. §271(f) to a process patent.

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Illinois Tool Works, Inc and Trident, Inc v. Independent Ink, Inc., filed August 4, 2005 (25 pages – 1MB*)

AIPLA on August 4, 2005, filed an amicus brief on the merits in Illinois Tool Works, Inc. v. Independent Ink, Inc. (No. 04-1329), in support of neither party, arguing that the mere existence of a patent should not create any presumption of market power in a relevant market to prove an antitrust violation under Section 1 of the Sherman Act.

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Jan K. Voda v. Cordis Corp., filed June 15, 2005 (29 pages – 155K*)

The CAFC is considering whether jurisdiction exists over foreign patent law claims based on federal supplemental jurisdiction statute, 28 U.S.C. §1367(a). AIPLA argues that in this circumstance federal courts lack supplemental jurisdiction over the assertion of the patentee of claims involving a foreign patent claims.

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Illinois Tool Works, Inc and Trident, Inc v. Independent Ink, Inc., filed May 4, 2005 (27 pages – 60K*)

AIPLA filed this amicus brief in support of the Petitioners' request to the Supreme Court to grant certiorari to review the decision of the Court of Appeals for the Federal Circuit in this case. In finding a Sherman Act Section 1 Antitrust violation based on the tying of a patented product to an unpatented product, the CAFC panel held that the mere existence of a patent on a product creates a rebuttable presumption that the patent owner has market power in the relevant market for the patented product itself. AIPLA argues in this brief that the mere existence of a patent should not create any presumption of market power in a relevant market.

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Integra Lifesciences I, Ltd. v. Merck KGaA, filed February 22, 2005 (31 pages – 234K*)

The Federal Circuit in Integra Lifesciences I, Ltd. v. Merck KGaA gave an improperly narrow interpretation to Section 271(e)(1) of Title 35, the infringement exemption for uses of patented inventions that are reasonably related to information submissions to the Food and Drug Administration. The ruling appears to limit the safe harbor protection to clinical studies using human subjects while excluding many other types of studies typically included in applications for FDA approval, including preclinical in vitro and animal studies, comparative studies, and safety profiling studies, excluding studies that are embraced by the plain language of the statute.

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Metro-Goldwyn-Mayer Studios INC v. Grokster, LTD, filed January 2005 (29 pages – 193K*)

AIPLA argues that the Supreme Court recognize that “contributory infringement" in copyright law includes “active inducement,” and that a showing of “substantial noninfringing uses” is not a defense to “active inducement.” AIPLA requests that the Court remand the case for a determination as to whether “active inducement” can be established under the facts of this case.

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Metro-Goldwyn-Mayer Studios INC v. Grokster, LTD, filed November 8, 2004 (14 pages – 157K*)

In an amicus brief filed November 8, 2004, AIPLA urged the Supreme Court to review the Ninth Circuit decision that a defendant may avoid liability for contributory copyright infringement with evidence that its product is “merely capable” of non-infringing uses. Filed in support of neither party, the brief argued that this decision creates a split in the circuits in light of the Seventh Circuit view that courts considering contributory copyright infringement must consider if the product “is widely used for legitimate, unobjectionable purposes.” This split plagues important sectors of the economy with confusion and uncertainty; copyright holders need practical protection from rampant infringement of their works, and software and equipment suppliers need predictable boundaries for the marketing of lawful products, according to the brief.

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In Re Wilhelm Elsner; In Re Keith W. Zary, filed October 12, 2004 (17 pages – 31K*)

AIPLA on October 12, 2004 filed an amicus brief urging the Federal Circuit to reconsider en banc the panel ruling that foreign sales of a plant covered by a U.S. patent can serve as evidence that a foreign publication is enabling and therefore anticipates the U.S. plant patent. According to the brief, this case presents the Court with the opportunity to answer the important question of whether information that does not itself constitute Section 102 prior art may nevertheless be considered in determining whether other information constitutes a statutory bar.

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Edward H. Phillips, Plaintiff-Appellant, v. AWH. Corporation, Hopeman Brothers, Inc., and Lofton Corporation, Defendants-Cross Appellants, filed September 20, 2004 (32 pages – 997K*)

AIPLA on September 20, 2004, filed an amicus brief in an en banc Federal Circuit case concerning the claim interpretation process. Although the court posed several questions for briefing, AIPLA urges the court to first address the fundamental standard that should govern claim construction: that a claim term must be construed from the perspective of a person of ordinary skill in the relevant art at the time the patent issues seeking to understand the term's meaning from a study of the entire intrinsic record.

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Miguel Figueroa, et al., Plaintiffs v. The United States, Defendant, brief filed September 13, 2004 (Motion and Brief - 19 pages, 667KB*; Exhibits - 66 pages, 3.6MB*)

While taking no position on the request for relief, AIPLA points out to the United States Court of Federal Claims that the diversion of funds from the USPTO leads to increased examiner burdens and decreased patent quality, thereby adversely impacting the ability of the Office to carry out the Constitutional command of promoting the progress of the useful arts.“ The brief was filed on September 13, 2004.

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KP Permanent Make-Up, Inc., Petitioner v. Lasting Impressions I, Inc.; MCN International, Inc., Respondents, filed April 20, 2004 (26 pages – 915K*)

The Ninth Circuit precludes a "fair use" defense under section 33(b)(4) of the Lanham Act in cases where there is a likelihood of confusion. The Circuit's reading of the fair use defense is not supported by the statutory text. Further, such a reading renders the "fair use" defense in section 33(b)(4) of the Lanham Act nugatory. A narrow reading, however, avoids serious first Amendment issues presented by an ineffective fair use defense. On the other hand, the Court should avoid establishing any countervailing absolute rule against considering likelihood of confusion in order to protect the balance embodied in the Lanham Act.

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Andrx Pharmaceuticals, Inc., Petitioner, v. The Kroger Co., Albertson’s, Inc., Hy-Vee, Inc., The Stop & Shop Supermarket Co., Walgreen Co., Eckerd Corp., CVS Meridian, Inc., and Rite Aid Corp., et al., Respondents,filed December 29, 2003. (PDF*)

The Sixth Circuit’s decision in In re Cardizem CD Antitrust Litigation, 332 F.3d 896 (6th Cir. 2003) (hereafter “Cardizem”) imposed per se antitrust illegality for an agreement to settle patent litigation in which the patent owner gave consideration to the alleged infringer in exchange for an agreement not to practice the patent before patent expiration. Although the specific facts of the case relate to pharmaceutical companies settling litigation under the Hatch-Waxman Act, the detrimental effect of the Sixth Circuit’s per se rule extends to all patent settlements and license agreements in all industries. The Sixth Circuit focused on monetary payments. But the implications are that any type of consideration flowing from a patentee to a potential infringer as part of the overall agreement would render the agreement per se illegal.

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Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., filed November 3, 2003.

The duty to obtain legal advice before engaging in activity that may result in infringement should be abolished. Abolishing this duty will eliminate the adverse inferences that are now drawn from failing to obtain legal advice or from asserting the attorney-client privilege to protect such advice. In many cases, raising substantial defenses at trial should defeat willful infringement liability, but not always. Some conduct may be sufficiently culpable that the court should balance the misconduct against the defenses raised in deciding whether to enhance damages. In striking this balance, the timing and circumstance under which the defendant learned of the defense may be a relevant factor.

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Dastar Corporation v. Twentieth Century Fox Film Corporation, filed February 14, 2003 (72K*)

A reverse passing off claim under section 43(a) of the Lanham Act requires that the plaintiff prove 1) that the defendant has falsely designated the origin of a work, or made any other false or misleading description or representation of fact, and 2) that consumers will likely be confused or deceived as to the origin, sponsorship, or approval of the work. Section 35 of the Lanham Act requires that enhanced awards of the defendant's profits be compensatory and not punitive; thus, a court applying section 35(a) may not award twice the defendant's profits for purely deterrent purposes.

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Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., et al., filed November 19, 2002 (637K*)

Prosecution history estoppel, including the rebuttal of the presumption of surrender, is a question of law for the trial judge, but may be supported by issues of fact. Such factual determinations should be decided by the jury in a jury trial, and should be reviewed by this court under the substantial evidence standard when decided by a jury or the clearly erroneous standard when decided by the judge. This court should allow the law regarding the criteria for rebutting the presumption of surrender to evolve on a case-by-case basis, and should avoid prematurely adopting a bright-line test.

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Moseley v. Victoria's Secret Stores, Inc., filed August 14, 2002 (85K*)

The phrase "causes dilution of the distinctive quality of the mark," in the Federal Trademark Dilution Act does not require a showing of actual harm for the granting of injunctive relief; rather, relief should be granted where there is a showing of a "likelihood of dilution."

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Eric Eldred, et al., v. John D. Ashcroft, filed August 5, 2002 (605K*)

The reversal of Congressional power to extend existing copyright terms would destabilize other areas of the law, Congress has the authority under the copyright clause to extend existing copyrights, and the decision below correctly held that the Copyright Term Extension Act does not violate the First Amendment.

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Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., et al., filed August 2001 (130K*)

The rigid "complete bar" rule adopted by the Federal Circuit, which is inconsistent with the Supreme Court's proscription against a rigid rule that invokes a prosecution history estoppel regardless of the reason for a claim amendment, should be rejected in favor of a standard that would impose an estoppel on the basis of an objective determination of whether the patent applicant evinced a clear and unmistakable surrender of otherwise patentable subject matter.

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J.E.M. Ag Supply Inc., et al. v. Pioneer Hi-Bred International, Inc., filed June 11, 2001 (66K*)

Sexually reproducing plants are within the scope of 35 U.S.C. §101 and accordingly are permissible subject matter for a utility patent.

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Johnson & Johnston Associates, Inc. v. R.E. Service Co., Inc. and Mark Frater, filed May 7, 2001 (113K*)

"The doctrine of equivalents may be relied upon with respect to disclosed, unclaimed subject matter so long as the application and prosecution history would not lead a reasonable competitor to conclude that the unclaimed subject matter had been abandoned."

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Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a/k/a SMC Corporation, and SMC Pneumatics, Inc., filed May 9, 2001 (100K*)

Brief of amicus curiae AIPLA in support of petition for certiorari notes that "complete bar" rule of Festo contravenes Supreme Court's doctrine of equivalents and prosecution history estoppel jurisprudence.

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The New York Times Company, Inc.; Newsday, Inc.; The Time Incorporated Magazine Company; Lexis/Nexis and University Microfilms International v. Jonathan Tasini; Mary Kay Blakely; Barbara Garson; Margot Mifflin; Sonia Jaffe Robbins and David Whitford, filed January 5, 2001 (320K*)

Conversion of a collective work from one medium to another is not a "revision" that is within the rights of a publisher under Section 201 (c) of the Copyright Act if each separate contribution is stripped-out from the collective work, but the mere conversion of a collective work from one medium to anothe

Related Files

Procedures for Requesting AIPLA Amicus Participation in a Pending Case (PDF File)
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