Top Stories of 2009: #10, #9, and #8

    By Donald Zuhn --

Reflecting upon the events of the past twelve months, Patent Docs presents its third annual list of top biotech/pharma stories.  For 2009, we identified ten top stories that we covered on Patent Docs last year.  Today, we count down stories #10, #9, and #8.  On Sunday, we will present stories #7, #6, and #5, and on Monday, we will count down the top four stories of 2009.  As with the 2008 list and 2007 list, links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look.  As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with our rankings, please let us know.

#10 -- President Obama Ushers in Change

On January 20, 2009, Barack Hussein Obama was sworn in as the 44th President of the United States.  The election of President Obama came in at #8 on our list of top stories for 2008 ("#8 -- Impact of Presidential Election on U.S. Patent Practice"), and at the time, we speculated that the direction the new Administration would take with the USPTO would likely be a top story for 2009.  President Obama's greatest impact on U.S. patent practice came via his nominations for Secretary of Commerce (Washington Governor Gary Locke) and Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (IBM Vice President and Assistant General Counsel of Intellectual Property Law David Kappos). The new Administration also took an active role in both the patent reform and follow-on biologics debates.

One day after being sworn in, President Obama acted swiftly to stall implementation of any rulemaking by the outgoing Bush Administration, and in March, asked the Director of the Office of Management and Budget (OMB) to produce a set of recommendations for a new Executive Order on Federal regulatory review.  President Obama also satisfied one of his campaign pledges in March when he reversed limits imposed by the Bush Administration on embryonic stem cell research.  As the economy rebounds from the Great Recession, the President's impact on U.S. patent practice could be even greater in 2010.

For information regarding this and other related topics, please see:

• "NIH Releases New Stem Cell Rules," July 7, 2009
• "Gary Locke Confirmed as New Secretary of Commerce," March 26, 2009
• "President Obama Reaffirms Faith in Science," March 11, 2009
• "President Obama to Lift Stem Cell Limits on Monday," March 8, 2009
• "White House Seeks Comments on Rulemaking and Rule Enforcement Policy," March 5, 2009
• "Center for American Progress Report a Mixed Bag of Recommendations to Obama Administration," February 11, 2009
• "BIO CEO Outlines Challenges for Obama Administration," January 22, 2009
• "Obama Acts to Limit New Federal Rules," January 21, 2009

#9 -- After Much Debate, Patent Reform Takes Backseat to Economic Crisis

The current patent reform debate has been ongoing since 2005, and but for the worst economic crisis since the Great Depression, Congress may well have passed patent reform legislation during 2009.  As late as November, patent reform's biggest proponent, Senate Judiciary Chairman Patrick Leahy (D-VT), wrote that patent reform's "time is now."  In October, the Republican General Counsel of the Senate Judiciary Committee, Joseph Matal, told attendees at the BIO IP Counsels Committee Conference that there was a 70-80% chance the Senate would pass a bill in 2009.

Congress got off to a quick start on patent reform in 2009, with both the Senate and House introducing bills on March 3rd.  Shortly thereafter, the Senate Judiciary Committee heard testimony regarding its efforts to reform U.S. patent law from Steven Appleton, Chairman and CEO of Micron Technology, Inc.; Philip Johnson, Chief Intellectual Property Counsel for Johnson & Johnson; David Kappos, Vice President and Assistant General Counsel of Intellectual Property Law and Strategy for International Business Machines Corp.; Taraneh Maghamé, Vice President of Tessera, Inc.; Herbert Wamsley, Executive Director for the Intellectual Property Owners Association; and Mark Lemley, the William H. Neukom Professor of Law at Stanford Law School.

In April, the Senate patent reform bill (S. 515) was voted out of the Judiciary Committee after Senators Leahy, Arlen Specter (R-PA), and Dianne Feinstein (D-CA) were able to reach an agreement on a damages provision that would provide for a gatekeeper approach, in which a court would determine the Georgia-Pacific factors to be considered by the jury in determining damages.  Later that month, the House held its own hearing on patent reform, receiving testimony from David Simon, Chief Patent Counsel for Intel, Inc.; Philip Johnson, Chief Intellectual Property Counsel for Johnson & Johnson; John Thomas, Professor at Georgetown University Law School; Jack Lasersohn, Partner with the Vertical Group; Dean Kamen, DEKA Research and Development Inc.; Mark Chandler, Senior Vice President for Cisco; and Bernard Cassidy, Senior Vice President and General Counsel for Tessera Inc.  Last year, patent reform came in at #3 on our top stories list ("#3 -- Patent Reform Stalls in the Senate"), and this year, we could have simply reused the heading from 2008.  However, in the Senate's defense, there should be little dispute that other more pressing matters required the body's focus in 2009.

For information regarding this and other related topics, please see:

• "Patent Reform Efforts Opposed by Small Business Group," December 16, 2009
• "Senator Leahy: 'Time Is Now' for Patent Reform," December 2, 2009
• "Patent 'Reform' May Happen This Year, After All," October 27, 2009
• "Commerce Department Brass Weighs in on Patent Reform," October 14, 2009
• "Obama Administration Weighs in Supporting Patent 'Reform,'" October 6, 2009
• "Tech Companies Send Letter on Patent Reform to Secretary Locke," September 17, 2009
• "A Response to Mr. Brill, and a Modest Proposal Regarding Inequitable Conduct," June 3, 2009
• "Former House Economist Sets Sights on Inequitable Conduct 'Reform,'" June 2, 2009
• "Docs at BIO: Patent Reform Super Session," May 26, 2009
• "More on House Patent Reform Hearing," May 12, 2009
• "BIO IP Policy Briefing," May 11, 2009
• "House Judiciary Committee Holds Hearing on Patent Reform," April 30, 2009
• "House Judiciary Committee (Finally) Releases Witness List for Patent Reform Hearing," April 29, 2009
• "CHI CEO on Patent Reform and Follow-on Biologics Legislation," April 28, 2009
• "Dickinson and Figg on Patent Reform," April 16, 2009
• "Not Everyone Thinks 'Patent Reform' is a Great Idea," April 7, 2009
• "Senate 'Patent Reform' Bill (S. 515) Voted out of Judiciary Committee," April 2, 2009
• "Some (But Not All) Amendments Introduced in 'Patent Reform' Bill," April 1, 2009
• "'Progress' on Senate 'Patent Reform' Bill," March 31, 2009
• "Senate Judiciary Committee Discusses S. 515 at Executive Business Meeting; Adopts "Technical" Amendment GRA09350," March 26, 2009
• "IPO Board Opposes USTPO Fee Increases and Willful Infringement Provision of Reform Bill," March 26, 2009
• "ABA IP Section Seeks Inequitable Conduct Reform," March 23, 2009
• "Senator Kyl Introduces Alternative to Leahy Patent Reform Bill," March 19, 2009
• "MAPP Economist Advises Congress on Damages Provision," March 17, 2009
• "Senate Judiciary Committee Places Patent Reform Bill on Agenda," March 15, 2009
• "More Response to New Patent Reform Legislation," March 12, 2009
• "Senate Judiciary Committee Holds Hearing on Patent Reform," March 10, 2009
• "Senator Specter Seeks Resolution of Issues before Vote on Patent Reform Bill," March 5, 2009
• "Senate Judiciary Committee Releases Witness List for Patent Reform Hearing," March 4, 2009
• "Senate and House Introduce New Patent Reform Legislation," March 3, 2009
• "BIO Meets the Press," February 26, 2009
• "Patent Reform Bill to Be Introduced on Monday . . . Maybe," February 25, 2009
• "Manufacturing Alliance Sends Letter on Patent Reform to President Obama," February 10, 2009
• "Science Progress Tackles Patent Reform," January 21, 2009
• "Heritage Foundation Offers Patent Reform Proposals to the New President," January 20, 2009
• "Manufacturing Alliance on Patent Policy: Apportionment of Damages Provision Will Have Adverse Effects," January 15, 2009
• "BIO Gives President-elect Obama Its Ideas on Patent Reform," January 6, 2009

#8 -- Federal Circuit Decides In re Kubin

The Federal Circuit began the year by hearing oral argument in In re Kubin, and less than three months later issued its decision.  In summarizing the CAFC's decision, Patent Docs author Kevin Noonan wrote that:

[T]he Federal Circuit not only affirmed the finding by the Board of Patent Appeals and Interferences that Kubin's invention was obvious, but in the process decided that the Supreme Court had overturned the Federal Circuit's In re Deuel decision.  This outcome is sufficiently disappointing in itself; the reasoning is all the more so.

One interesting aspect of the Kubin oral argument involved an exchange between Judge Rader and USPTO Associate Solicitor Janet Gongola regarding the Office's motivation for revising Example 11 of the new Written Description Training Materials (which were issued in March 2008).  Judge Rader essentially accused the USPTO of revising Example 11 so that it would no longer be detrimental to the Office's position in Kubin.

For information regarding this and other related topics, please see:

• "Is Everything Obvious?" April 26, 2009
• "The Non-obviousness of DNA," April 13, 2009
• "In re Kubin (Fed. Cir. 2009)," April 5, 2009
• "In re Kubin: The Obviousness of DNA," January 14, 2009
• "Kubin Panel Questions Motivation behind Reversal in New Written Description Training Materials," January 8, 2009
• "In re Kubin to Be Argued before the Federal Circuit on Thursday," January 7, 2009

Comments

[6]

Don, Kev, go to Hulu sometime and watch "the future of food". Zeitgeist gonna get dis sht here soon. That's like the 4th new movie I've found this year.

[6]

Where, I wonder, is the pro bono work in the patent lawyer field that should be taking place on the behalf of these farmers? Perhaps it is happening and I just don't hear about it. Or perhaps it doesn't exist in large amounts. In either case, I'm disappointed.

When I get out of the office I might just patent a few seeds and make sure they end up in some people's front yards. These people might or might not be Monsanto execs/employees.

"How about them apples?" As my grandfather used to say.

Then, after I get a jury to say they infringed, I could also argue at damages phase that they're denying me my right to license them the technology.

LOLOLOL.

Or maybe they'll just settle or license my "products". LOL

I do have one question for you guys on here though. Wouldn't it be a cause of action under tort law or some such for someone to contaminate your products? Wouldn't the farmer then simply sue his neighbor and recover the costs of the litigation against the seed company? If not, why has tort law failed us?

[Gena777]

Hopefully, the end of the "Great Recession" will permit patent law discussions to return to the legislative table. IP and patents are critical to our economy, and serious reform should take place as soon as possible.
http://www.GeneralPatent.com

[staff3]

Just because they call it "reform" does not make it so.

Please see http://truereform.piausa.org/ for a different/opposing view on patent reform.