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Jessica Chesher

Managing Editor

Innovation eReview

September 2008 Edition

In This Issue:

Welcome Message

Welcome to the September 2008 edition of the Innovation e-Review newsletter.

This edition’s feature article, by T. Aidan Toombs of Sheppard, Mullin, Richter & Hampton LLP, addresses a recent petition to the Supreme Court for certiorari from the Federal Circuit’s decision to affirm the dismissal of a patent infringement action against the State of California based on a sovereign immunity defense. This petition provides the Supreme Court with an opportunity to address whether a state that has invoked federal jurisdiction to adjudicate its patent rights thereby waives its sovereign immunity to private patent infringement actions.

In addition, this edition highlights SiMPore Inc., a Rochester-based company that uses technology developed at the University of Rochester to produce ultrathin nanoporous membranes, membrane filters, and filtration products for imaging, separation, purification, and concentration of nano-sized materials, such as proteins and nanotubes. SiMPore will also be participating in the NYS STLC’s Lab-To-Market conference described below.

This edition also reflects the contributions of our new Senior Editor, Melissa K. Dobson, and Contributing Editors Laura R. Hadley, Erin Lawless, and Jared M. Slater, and it is our pleasure to welcome them to the NYS STLC.

We are also pleased to announce the latest conference in the NYS STLC’s Lab-To-Market series. On November 7, 2008, the NYS STLC will host Commercializing University Inventions: Case Studies at the Welch Allyn Lodge in Skaneateles, New York. This conference will examine how successful early-stage companies in New York State have managed the multiple technical, market, financial, and legal challenges inherent in transforming university inventions into commercially viable products. The keynote address will be given by Professor Duncan Moore, Vice Provost for Entrepreneurship at the University of Rochester and a renowned authority on the commercialization of new technologies. In addition, several CEOs will describe the commercialization challenges their companies have faced and the role of university technology transfer managers, research scientists and engineers, marketing and sales personnel, financial advisors and investors, and intellectual property and transactional lawyers in addressing these challenges. Participating CEOs include:

• Allen Barnett, Kinex Pharmaceuticals, LLC.;
• Patrick Govang, e2e Materials, LLC;
• John Hart, Lumetrics, Inc.;
• Richard Richmond, SiMPore Inc.;
• Richard Saburro, Starfire Systems, Inc.; and
• Brad Treat, Mezmeriz, Inc.

Registration is available at labtomarket.syr.edu. There is no registration fee, but space is limited and will be filled on a first-to-register basis.

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

Feature Article: Patent Suit Brings Question of Immunity Before Supreme Court

by T. Aidan Toombs, Sheppard, Mullin, Richter & Hampton LLP

Reprinted with permission from Sheppard, Mullin, Richter & Hampton LLP

The Supreme Court may soon consider an issue of sovereign immunity that, depending on the outcome, could open the door to private patent holder lawsuits against state governments. Attorneys for Biomedical Patent Management Corp. (BPM), a small California biotech, are seeking certiorari in a Federal Circuit case against California that was dismissed on grounds of sovereign immunity, thus denying the BPM patent holder millions it says it is owed in royalties from the state. Biomedical Patent Management Corp. v. California Department of Health Services, 505 F.3d 1328 (Fed. Cir. 2007) (petition for cert. filed, 2008 WL 194299 (U.S. Jan. 22, 2008) (No. 07-956). The crux of BPM's argument is that California, through its aggressive patent enforcement in the courts, has basically litigated away its sovereign immunity. Or stated broadly, BPM argues that any state's repeated and voluntary invocation of the jurisdiction of federal courts to adjudicate its rights under federal patent laws constitutes a general waiver of its sovereign immunity to private suits under those same laws.  More....

Intellectual Property News: Tiffany, Inc. v. eBay, Inc: Court Holds eBay Not Liable for Contributory Trademark Infringement

by Jared M. Slater

In its decision dated July 14, 2008, the U.S. District for the Court Southern District of New York held that eBay, Inc. (“eBay”) was not liable for direct or contributory trademark infringement related to the sale of counterfeit Tiffany, Inc. (“Tiffany”) merchandise on eBay’s website. Judge Richard J. Sullivan concluded that the “law is clear: it is the trademark owner’s burden to police its mark and companies like eBay cannot be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring on their websites.”  More....

Intellectual Property News: Senate Judiciary Committee Approves Enforcement of Intellectual Property Rights Act

by Erin Lawless

On September 11, 2008, the U.S. Senate Judiciary Committee approved the Enforcement of Intellectual Property Rights Act of 2008 (“Enforcement Act”), which would permit the Department of Justice to litigate civil suits for copyright infringement on behalf of copyright owners and grant the president the authority to appoint an “Intellectual Property Enforcement Coordinator” to manage inter-agency enforcement actions.  More....

Industry News: 150 Million CPU Hours on RPI Supercomputer Available to New York State Researchers and Companies

by Erin Lawless

As part of its investment in the $100 million Computational Center for Nanotechnology Innovations (“CCNI”) at Rensselaer Polytechnic Institute (“RPI”), New York State has reserved 20 percent, or approximately 150 million CPU hours, of the CCNI’s IBM Blue Gene supercomputer usage over the next three years for New York State researchers and companies.  More....

New York State Company Spotlight: SiMPore Inc.

by Melissa K. Dobson

SiMPore Inc. (“SiMPore”) develops and produces ultrathin nanoporous membranes, membrane filters, and filtration products for imaging, separation, purification, and concentration of nano-sized materials, such as proteins and nanotubes. This technology enables precision fractionation and purification of proteins, drug molecules, viruses and other nanomaterials only previously possible with more complex and costly equipment.  More....

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