Top Intellectual Property Law Issues 2005, According to Wolf Greenfield

(2005-01-06)

Internet-Related Cases, Higher Filing Fees, Antitrust-Law Conflict Reshape Landscape

Top intellectual property issues and cases of 2005, according to Wolf, Greenfield & Sacks, P.C., include:


-- Supreme Court to rule Grokster music file-sharing case.
The high court will reconsider the 9th Circuit U.S. Court of Appeals'
ruling that Grokster, a file-sharing network, is not responsible for
copyright infringement by its users.

"I predict the Supreme Court will uphold the decision and that
copyright holders will need to pursue alternate strategies to protect
their rights," says Michael Albert, head of litigation at Wolf
Greenfield. "This case is part of the clash between digital-rights
advocates and 'right-to-copy' advocates that's playing out all over the
world in litigation and legislation," he adds.

-- More conflict between intellectual property law and antitrust law.
Antitrust law promotes open competition while IP law restricts it by
giving owners of IP exclusive rights. Has the pendulum swung too far
toward the IP side? Some companies use patents solely as a litigation
program. Antitrust law could be enforced to crack down on that. The
Federal Trade Commission held hearings on the issue last year and
issued a report. "Expect some major movement -- a court decision or
legislation -- in 2005," says Edmund Walsh, counsel.

-- Fewer but higher-quality patents because of higher filing fees.
In December, the US Patent and Trademark Office raised its filing fees
significantly -- particularly for patent claims, which define the scope
or "boundaries" of an invention. Companies of all sizes must think
harder about which patents and claims are worth pursuing, Walsh says.
While the impact on a small business is obvious, even big technology
companies are affected because they file so many patents.

-- Phillips v. AWH case on standards for patent claim interpretation.
The 1st Circuit U.S. Court of Appeals (CAFC), the nation's top patent
court, will decide on Phillips v. AWH, which will clarify the
interpretation of patent claims -- and possibly lead to more
restrictive interpretations. Today, different judges use different
standards to interpret claims. Some rely on the patents and drawings;
others use dictionary definitions of words in the claims. The decision
will enforce consistent standards and have a major impact on how
broadly claims are interpreted and on future litigation, says James J.
Foster, a senior litigator at Wolf Greenfield.

-- Fallout from Knorr-Bremse decision on willful patent infringement.
This landmark 2004 CAFC case reversed a longtime precedent that
presumed a company might be deemed guilty of willfully violating a
patent unless its lawyer had filed a letter certifying its innocence.
But the devil is in the details as the lower courts apply it case by
case in litigation, Foster says.

-- Decision on Tiffany's trademark-infringement lawsuit against eBay.
Tiffany & Company last year sued eBay, claiming the Internet site
infringes on its trademarks by allowing users to sell fake Tiffany
jewelry and "actively encourages the sale of counterfeit merchandise."
The U.S. District Court of the Southern District of New York will hear
this first-of-a-kind case and is expected to issue a decision sometime
in 2005.

Wolf, Greenfield & Sacks, P.C., Boston, (www.wolfgreenfield.com), is one of the most experienced law firms devoted to the practice of intellectual property law, including patents, trademarks, copyrights, trade secrets and related litigation

Contact:
Henry Stimpson
Stimpson Communications
508-647-0705
HStimpson@StimpsonCommunications.com

Audra K. Callanan
Wolf Greenfield
617-573-7968
audra.callanan@wolfgreenfield.com

Sara Crocker
Wolf Greenfield
617-573-7831
Sara.Crocker@WolfGreenfield.com


SOURCE: Wolf, Greenfield & Sacks