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Friday, January 14, 2011

Patent Reform: Judicial Developments in Areas of Legislative Interest

John R. Thomas
Visiting Scholar

Legislative interest in the patent system has been evidenced by the introduction of reform legislation in the 111th and predecessor Congresses. These bills would have amended existing patent law in numerous respects. Although none of these bills were enacted, discussion of patent reform may continue in the 112th Congress.

Although the patent system has been the subject of congressional interest over the past few years, the courts have also been active in making changes to important patent law principles. Many changes introduced by the judiciary have concerned topics that are also the subject of congressional consideration. In particular: 

  • The Supreme Court issued an important decision in 2007 concerning the availability of injunctive relief against adjudicated patent infringers in eBay v. MercExchange. 
  • In 2008, the Court of Appeals for the Federal Circuit (“Federal Circuit”) reached its ruling in In re TS Tech concerning the standards for deciding which venue is appropriate for conducting a patent trial. 
  • In 2009, the Federal Circuit handed down its opinion in Lucent Technologies. v. Gateway with respect to the assessment of damages in patent infringement cases. 
  • The Federal Circuit issued a decision in 2007 concerning the availability of enhanced damages for willful patent infringers in In re Seagate Technology
  • The 2007 Supreme Court opinion in Microsoft v. AT&T addressed the scope of extraterritorial protection afforded to U.S. patents. 
  • The 2010 Supreme Court opinion in Bilski v. Kappos concerned the issue of patentable subject matter. 

Some observers believe that several of these opinions have addressed the very concerns that had motivated legislative reform proposals, thereby obviating or reducing the need for congressional action. However, other commentators believe that these decisions have not fully addressed perceived problems with principles of patent law.

Date of Report: January 5 2011
Number of Pages: 21
Order Number: R41090
Price: $29.95

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