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« Third Follow-on Biologics Bill Introduced in 111th Congress | Main | Anti-Reverse Payment Legislation Introduced in the House »

April 01, 2009



My comments on the proposed amendment:

Damages: Appears to be acceptable. At least the judge has the flexibility to determine which “methodologies and factors” go into the damage calculation equation.

Willful Infringement Defense: Appears to be acceptable; at least the criteria for the defense are now statutory, not based exclusively on what has been “ever changing” court-based criteria.

3rd Party Statements. I’m not fond of this provision, but the amendments get rid of very concerning language that would have allowed “other evidence” beyond “patents and publications” to be submitted. The USPTO, and especially the examining corps., doesn’t do well with “other evidence” that isn’t a “patent or publication.”

Interlocutory Appeals of Claim Construction. I’m still not fond of this provision for reasons expressed by Chief Judge Michel of the Federal Circuit. While the modified tries to restrict such interlocutory appeals to those “which may materially advance the ultimate termination of the litigation,” that could be potentially said of almost any claim construction decision. I also predict that the Federal Circuit will interpret this “materially advance” provision very restrictively, meaning they’ll likely repeatedly bounce such interlocutory appeals to discourage them, to the extent that the current situation won’t change (trust me, Michel is going to “ride herd” with the other Federal Circuit judges on this provision).

Failure to Disclose Best Mode. Again, this seems to make requiring the “best mode” or at least any incentive to disclose it superfluous. In fact, expect an increase in allegations of “unenforceability” (the statute by its language only explicitly precludes “invalidity” which is or could viewed as different from “unenforceability”) of patents for failure to disclose the “best mode” based on inequitable conduct.

Pilot Program for Certain District Courts. No comments.

That’s it from me on these proposed “modifications.”

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