IP NEWS
Highlights of the latest intellectual property cases from around the country.
Package Patent Licensing After <i>Microsoft</i>
The law governing package licensing of patents is currently undergoing a significant change. Historically, package licenses were subject to a 'per se' liability under the controlling legal doctrines. Using this per se test, a package license could be rendered unenforceable absent any inquiry into the actual market effects of the license. The recent case of <i>United States v. Microsoft,</i> 253 F.3d 34 (D.C. Cir. 2001), marks, however, the emergence of an antitrust doctrine called the 'rule of reason' that is likely to become the dominant legal doctrine for testing package licensing of patents. This is a significant change because the rule of reason is a market-based approach that balances the anticompetitive and pro-competitive benefits of the licensing practice. Thus, a package license may be held to be enforceable even if it would have failed the traditional per se test of the patent misuse doctrine or antitrust laws.
Direct Evidence Not Required in Mixed Motive Case
Last month, the Supreme Court was asked to decide whether a plaintiff must present direct evidence of discrimination in order to obtain a mixed-motive instruction under Title VII, as amended by the Civil Rights Act of 1991. <i>Desert Palace, Inc. v. Costa</i>, 2003 WL 21310219 (U.S. June 9, 2003) The Court unanimously held that direct evidence is not required.
CASE NOTES
Highlights of the latest product liability cases from around the country.
Firestone's Trade Secret Remains Safe
A recent state supreme court decision may have nationwide impact on tire litigation. On May 22 the Texas Supreme Court held that plaintiffs seeking trade secret information from a tire manufacturer must show specifically how the lack of the information could derail a case. The court's decision in <i>In Re Bridgestone/Firestone Inc.</i> gives no guidelines. Justice Nathan Hecht wrote for the majority that the test established in 1998 by the court in <i>In Re Continental General Tire Inc.</i> for discovery of trade secret information 'cannot be satisfied merely by general assertions of unfairness,' According to Judge Hecht's opinion, the plaintiffs in about 150 cases alleging Firestone tire-tread separations and Ford Explorer rollover accidents failed to show how access to the skim-stock formulas used by the tire company is necessary for a 'fair adjudication' of their claims.
Practice Tip: Consider Filing a Motion to Bifurcate Medical Causation
In a complex product liability case where medical causation is at issue, defendants may want to consider moving to bifurcate the trial so that medical causation issues are tried before any liability or damages issues. If the plaintiff fails to convince the jury that the product caused the alleged injury, the case will terminate. If the jury does find causation, the trial continues with the same jury and focuses on liability and damages issues.
The Impact of HIPAA Privacy Regulations on Discovery of Plaintiffs' Medical Records
When products liability defense counsel first heard of the new privacy regulations issued by the U.S. Department of Health and Human Services under the Health Insurance Portability and Accountability Act of 1996 (HIPAA Privacy Regulations), most counsel probably thought that only their regulatory healthcare colleagues would be affected by these detailed and complicated laws. How great an impact the HIPAA Privacy Regulations will have on product liability litigation in general is yet to be seen, but it is clear that these regulations will have an immediate effect on discovery of medical records. Under the statutory or common law of most states, when a plaintiff files a suit that puts his/her medical or health condition at issue, the plaintiff waives his/her right to privacy, to at least some extent, in his/her medical records. When the HIPAA Privacy Regulations became enforceable on April 14, 2003, this was no longer the case. Because the HIPAA Privacy Regulations provide strict privacy protection for a patient's medical information, even if the patient filed a lawsuit with his/her health at issue, discovery of the patient's medical records could become more difficult for product liability defense counsel. However, defense counsel still will have several options to obtain discovery of a plaintiff's medical records under the HIPAA Privacy Regulations.
Package Patent Licensing After Microsoft
The law governing package licensing of patents is currently undergoing a significant change. Historically, package licenses were subject to a 'per se' liability under the controlling legal doctrines. Using this per se test, a package license could be rendered unenforceable absent any inquiry into the actual market effects of the license. The recent case of <i>United States v. Microsoft</i>, 253 F.3d 34 (D.C. Cir. 2001), marks, however, the emergence of an antitrust doctrine called the 'rule of reason' that is likely to become the dominant legal doctrine for testing package licensing of patents. This is a significant change because the rule of reason is a market-based approach that balances the anticompetitive and pro-competitive benefits of the licensing practice. Thus, a package license may be held to be enforceable even if it would have failed the traditional per se test of the patent misuse doctrine or antitrust laws.
Move Over Letterman: Top 10 Most Common IP Management Mistakes for New Companies
<b>1. TOO LATE TO FILE U.S. AND INTERNATIONAL PATENT APPLICATIONS.</b>Unfortunately for many good technology companies, it may be too late to file for patent protection. The current U.S. rule generally provides applicants with a one-year grace period during which a patent application must be filed after certain public or private disclosures of the invention. Such disclosures may arise, for example, from a mere 'offer for sale' of the technology, even if the product has not yet been built or prototyped. In comparison, the foreign rule, which applies to many industrialized jurisdictions, such as Japan and various European countries, does not give applicants the benefit of any grace period after a public disclosure has occurred. Thus, it is legally compelling for applicants to consider filing for patent protection as soon as possible after invention. Although in some situations there may be some special exception that allows for a late filing, it is not advisable for applicants to count on those exceptions.
