LJN Newsletters

Highlights of the latest intellectual property news from around the country.

To avoid declaratory judgment actions, patent holders may opt to sue or threaten the purchasers of an allegedly infringing product, without threatening suit against the manufacturer. In effect, the patent holder coerces the manufacturing company to give up the right to manufacture or distribute the accused product by scaring off its customers. At what point does this activity create grounds for a declaratory judgment action by the manufacturer?

In Proveris Scientific Corp. v. Innovasystems, Inc., the Federal Circuit addressed whether the "safe-harbor" provision of the Hatch-Waxman Act applies to immunize infringement if the accused product is reasonably related to the development and submission of information to the FDA for regulatory approval purposes.

The U.S. Court of Appeals for the Federal Circuit has long maintained a high bar for proving inequitable conduct. This high bar is appropriate given the severity of the remedy — unenforceability of the entire patent — and the relative ease of using hindsight to find fault with the prosecution of a patent. Several recent decisions, however, have pointed toward a sinking standard for proving inequitable conduct, which has created an atmosphere of uncertainty about the proper scope of the inequitable conduct defense. The Federal Circuit's recent opinion on the subject, Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., appears to be an attempt to right the ship by reiterating the standards for proving inequitable conduct that were established more than 20 years ago.

Bump messages" ' messages posted to Internet forums for the purpose of moving older message threads to a more prominent spot on the page ' do not constitute "republication" of an allegedly defamatory statement, a New York state judge has concluded.

One area that continues to surface is the use of chat rooms, blogs, and other venues by which users of the Web site, whether the company's or a third-party site supported by the FDA-regulated company, can exchange experiences about medical treatments, comment on the company or competitor's products, or otherwise share information. Some companies may provide such forums on their own Web sites to amass the information for market research or generate goodwill. Other companies may engage a third-party site to control the dissemination of information and even disclaim responsibility for the content by giving an unrestricted grant and allowing the third party to run and control the information posted on the Web site.

Web 2.0 is more than merely an upgrade of Web 1.0; rather, it is an evolutionary step toward a major change to the practice of law ' and the end of the bricks-and-mortar world of law firms as we know them today.

Jeffrey Weinstein's client was so outraged by the deposition testimony in her fraud suit against a Houston car dealership that Weinstein posted an excerpt from the deposition on YouTube and put a link to the video on his firm's Web site. But the video isn't on YouTube anymore. Although law professors say lawyers can, under most circumstances, do what they want with deposition testimony, the defendant in the litigation secured a court order on Dec. 3 that forced Weinstein to take down the video on the ground that it wasn't a public record.