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Jessica Chesher

Managing Editor

Innovation eReview

April 2008 Edition

In This Issue:

Welcome Message

by Molly C. Zimmermann

Welcome to the April edition of the Innovation e-Review newsletter. I write as one of two new Associate Directors of the New York State Science & Technology Law Center (“NYS STLC”) at Syracuse University College of Law (more from Hubert Yang next month). Most recently, I worked as Associate Counsel at SUNY Upstate Medical University, where I worked with the Colleges of Medicine, Graduate Studies, and Nursing and Health Professions on resident/student, research, and compliance issues; the University on human resource issues; and the hospital on medical staff issues. Before that, I spent many years working with the New York City Health and Hospitals Corporation. Throughout my career, the academic aspect of health care has always been of interest to me and now links me to the NYS STLC.

This month’s newsletter contains two feature articles. The first is by Professor Lisa A. Dolak of the Syracuse University College of Law. Professor Dolak’s article, entitled Patent Reform: A Necessary Evil?, was previously published in the February/March 2008 issue of innovation magazine. We are grateful for Professor Dolak’s insights into the Patent Reform Act’s proposed changes, including a “first inventor to file” system, new mechanisms to challenge patents, and new damages provisions, as well as the potential impact of these changes on individuals and small businesses.

The second feature article, by Philip G. Semprevio II, reviews the patent exhaustion doctrine and sets the stage for LG Electronics, Inc. v. Quanta Computer, Inc., a case currently before the U.S. Supreme Court.

We welcome your thoughts and comments. Please feel free to contact us at nysstlc@law.syr.edu. Thank you.


Molly Zimmermann

Associate Director,
New York State Science & Technology Law Center
at Syracuse University College of Law


Feature Article: Patent Reform: A Necessary Evil?

by Professor Lisa A. Dolak, Syracuse University College of Law

Reprinted with permission of innovation: America's Journal of Technology Commercialization (February / March 2008)

The pending patent reform legislation has divided the patent community.  Its avid proponents, including a number of large high-tech companies, argue that it would reduce the number of “junk” patents and give accused patent infringers a much-needed fair chance in court.  Some opponents contend that the pending bills go too far in some respects and not far enough in others.  Its most vocal opponents include some advocates for independent inventors, who have nothing good to say about the current legislation.  More....

Feature Article: The Patent Exhaustion Doctrine Under Review by the Supreme Court: LG Electronics, Inc. v. Quanta Computer, Inc.

by Philip G. Semprevio II

Over the past five years, the Supreme Court has decided eight patent cases, and it will continue to scrutinize the patent laws during its current term. The Supreme Court recently granted certiorari in LG Electronics, Inc. v. Quanta Computer, Inc., a case with potentially wide-ranging implications for patent licensing agreements.  More....

Intellectual Property News: In Re Bilski: The Federal Circuit Re-Examines Method Patents

by Blaine T. Bettinger

When the Supreme Court dismissed certiorari in Laboratory Corp. of America Holdings v. Metabolite Labs., Inc. 126 S. Ct. 2921 (2006), Justice Breyer (joined by Justices Stevens and Souter) noted that, although the Court of Appeals for the Federal Circuit (“Federal Circuit”) has previously held that a process involving a “useful, concrete, and tangible result” could be patentable subject matter, State Street Bank & Trust Co. v. Signature Fin. Group, Inc. 149 F.3d 1368 (Fed. Cir. 1998), the Supreme Court has “never made such a statement, and if taken literally, the statement would cover instances where this Court has held the contrary.”  More....

Intellectual Property News: Court Permanently Enjoins USPTO-Proposed New Rules

by Drew Berweger

On April 1, 2008, the U.S. District Court for the Eastern District of Virginia (J. Cacheris) permanently enjoined the U.S. Patent and Trademark Office (“USPTO”) from implementing its proposed new patent rules, which would have restricted the number of continuing applications (to 2) and requests for continuing examinations (to 1) and required additional documentation for applications that contained more than 5 independent claims or 25 total claims, on the grounds that the proposed rules are in excess of the USPTO’s statutory authority.   More....

Intellectual Property News: Patent Auctions: Another Option for Unlocking Liquidity

by Drew Berweger

For patent owners wary of making the leap from the laboratory to the marketplace, a patent auction offers another possible option for extracting value from patents and other intellectual property assets.  More....

Industry News: Google Stores Health Records Online: Third Parties and the Health Insurance Portability and Accountability Act

by Cristin Cavanaugh

Google, Inc. (“Google”) has announced plans to test a pilot program that will allow patients to store and retrieve their health records online.  More....

Grants and Funding Opportunities

by Tyler Salvesen