Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

The Winter 2008 edition of the John Marshall Review of Intellectual Property Law has been published and is available online by clicking here.  It includes several interesting articles, including:

• An argument for making stage directions copyrightable, Jennifer J. Maxwell, Making a Federal Case for Copyrighting Stage Directions: Einhorn v. Mergatroyd Productions, 7 J. Marshall Rev. Intell. Prop. L. 393 (2008); and
  
• John W. Osborne, Justice Breyer's Bicycle and the Ignored Elephant of Patent Exhaustion: An Avoidable Collision in Quanta v. LGE, 7 J. Marshall Rev. Intell. Prop. L. 245 (2008), arguing that the Supreme Court should chart its own course regarding patent exhaustion, instead of adopting the parties' positions in Quanta v. LG (click here for more on the case in the Blog's archives):

The Federal Circuit held in LGE v. Bizcom that patent exhaustion could be disclaimed by contract.

The confusion regarding patent exhaustion evident in the Federal Circuit’s LGE v. Bizcom decision can be entirely eliminated by strict adherence to the Supreme Court’s Univis Lens decision. Univis Lens makes clear that the sale of an article embodying the essential features of a patent claim results in the exhaustion of that claim.

But patent exhaustion is reflective of the scope of patent rights granted by statute. A statutory grant of rights should not be expandable by private contract. The Supreme Court should thus reverse in Quanta v. LGE. 261 This conclusion applies equally to any type of patent claim, i.e., component, apparatus, composition, system, combination, method, or process claims. Identifying the essential features of a patent claim, i.e., the patentably distinct features, clarifies the exhaustion analysis, results in predictability, and eliminates the confusion between the doctrines of exhaustion and implied license.

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The big news in patent law this week is the Supreme Court oral argument in Microsoft v. AT&T.  Microsoft exports software from the United States to various countries.  The software code alone cannot infringe AT&T's patents until it is combined with the hardware, which only occurs after the software has left the United States.  So, exporting the software is not an act of infringement.  The issue, therefore, is whether, pursuant to 35 U.S.C. Section 271(f), exporting the software constitutes:

suppl[y] . . . from the United States . . . [of] all or a substantial portion of the components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the United States,” as well as the “suppl[y] . . . from the United States [of] any component of a patented invention that is especially made or especially adapted for use in the invention.

For more on the issues, you can find the briefs at Patently-O. 

The case has received substantial media attention both because it was granted cert and because the case could have effects far beyond the international exportation of software.  The oral arguments were interesting (transcript here) and both the main stream media and blogs are frantically reading the tea leaves.

My favorite oral argument quotes both came from Justice Scalia:

JUSTICE SCALIA:  Mr. Olson, before you get into the merits I have a question, a preliminary question. I understand from AT&T's brief that there has been a stipulation entered into between the parties after the judgment below which preserved Microsoft's right to appeal and prescribed different dollar amounts that Microsoft must pay AT&T depending on the outcome of the appeal. Does that raise any, any muteness problem? Can you sort of wager on the outcome of an appeal that way?

                                                               * * *

JUSTICE SCALIA:  I hope we can continue calling it the golden disk. It has a certain Scheherazade quality that really adds a lot of interest to this case.

(Laughter.)

For more on the oral arguments and analysis of the case generally, check out:

Patently-O -- Discussion of the oral argument and quotes from the transcript.

The BLT (Blog of the Legal Times)* -- Coverage of Solicitor General Ted Olson accidentally referring to Justice Stevens (a former Chicagoan) as Justice Scalia and Chief Justice Roberts recusing himself based upon his stock holdings. 

The WSJ Law Blog -- Focusing on Justice Breyer's statement to AT&T:  "I don’t see how to decide for you.”

The WSJ print story (subscription required) -- A broader overview of the story, including a discussion of the fact that the Supreme Court has never held that software is patentable.

271 Patent Blog -- Focusing on the "metaphysical" aspects of the case with extensive quotes from the oral argument.

IP Kat -- A pre-argument case detailing the parties' arguments.

*  This is a new blog that is well worth checking out and adding to your RSS feeds.

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