The Intellectual Property Strategist

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

In recent years, cases such as <i>Enzo Biochem, Inc. v. Gen-Probe, Inc.</i>, 323 F.3d 956 (Fed. Cir. 2002) ('<i>Enzo</i>') and <i>University of Rochester v. G.D. Searle and Co., Inc.</i>, 375 F.3d 1303 (Fed. Cir. 2004) ('<i>Rochester</i>') have fueled an ongoing debate over whether the first paragraph of 35 U.S.C. &sect;112 includes a written description requirement, separate and distinct from enablement and best mode. According to Judge Randall Ray Rader, <i>Univ. of Cal. v. Eli Lilly &amp; Co.</i>, 119 F.3d 1559 (Fed. Cir. 1997) ('<i>Eli Lilly</i>') brought the written description requirement squarely to light. <i>Rochester</i>, 375 F.3d at 1307 (Circuit Judge Rader dissenting). This 'new' requirement creates 'enormous confusion,' not only for the courts, but also for patent drafters. <i>Id.</i> Because the requirement is in flux, patent practitioners should avoid overlooking the requirement or taking it too lightly.

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Recently, in a case of first impression, the Trademark Trial and Appeal Board refused to grant trademark protection to the flavor of an antidepressant tablet on the grounds that the flavor was functional and incapable of serving as a mark. <i>In re N.V. Organon</i>, 79 USPQ2d 1639 (TTAB 2006). The decision is a departure from the trend of extending protection to nontraditional trademarks. Although the Board left the door open to the possibility of registering flavor as a trademark, it made clear that future applicants will face significant challenges in registering such marks, including: 1) proving that a flavor has acquired secondary meaning; 2) overcoming the difficulties inherent in protecting a flavor due to the subjective nature of taste; and 3) proving that a flavor functions as a source indicator despite the fact that consumers are not exposed to a product's flavor prior to purchase.

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On Oct. 27, 2006, the Supreme Court granted certiorari in <i>Microsoft Corp. v. AT&amp;T Corp.</i> (No. 05-1056), preparing to elucidate the contours of patent infringement under 35 U.S.C. &sect;271(f) as applied to the exportation of software code. This case marks the first time in the 22 years since Congress enacted the provision that the Court will venture into this area. The outcome may have significant ramifications for the software industry because &sect;271(f) was widely assumed to apply only to the tangible components of a physical machine. If &sect;271(f) applies equally to software, then software companies will need to rethink their exposure to liability when exporting software abroad. Liability under &sect;271(f) may extend beyond the initial act of exporting and further include downstream activities, such as copying and installing that are done entirely outside of the United States.

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

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In reviewing <i>KSR Int'l v. Teleflex, Inc.</i> (No. 04-1350), the Supreme Court is set to tackle one of the fundamental issues of patentability ' the standard for obviousness under 35 U.S.C. '103. As expected, this case has generated significant interest and numerous <i>amicus</i> briefs have been filed. With oral argument expected to be heard late this month, this case marks the first time in 30 years that the Court will examine this particular issue.