News 2001

October 31 | October 10 | September 7 | August 24

October 31, 2001

  • In 1997, the Federal Circuit, In re Portola Packaging, Inc., 122 F.3d 1473 (Fed. Cir. 1997), held that the previous citation by or to, or consideration by the United States Patent and Trademark Office (PTO) of a patent or printed publication precludes there being a substantial new question of
    patentability in a patent reexamination proceeding. This ruling, which has received major criticism, may be overruled by legislation. Rep. Howard Coble (R-NC) introduced H.R. 1866, which would amend federal law to specifically allow reexaminations even if a patent or printed publication
    was cited by or to, or considered by the PTO. Rep. Coble also has introduced H.R. 1886, which would allow third parties to appeal Board of Patent Appeals and Interferences' reexamination decisions to the Federal Circuit.

    Text of H.R. 1866:
    Text of H.R. 1886:

  • The Judicial Conference of the United States agreed to make civil and bankruptcy court files vailable on the Internet. To take into account privacy concerns of witnesses and others, personal identifiers will be blocked out, including social security numbers, birth dates, and financial information. Before making criminal case files available, the Judicial Conference is going to wait until 2003 to review the experience with civil and bankruptcy cases.
  • To view a full copy of the latest Watch Report in PDF format, please visit: News and Analysis of Major Legal and Policy Issues Affecting the Private Sector written by Daren Bakst, Policy Counsel, NLCPI.

October 10, 2001

September 7, 2001

  • eBay Inc. won what it called a precedent-setting court victory Thursday when a federal judge ruled that the Internet auction company was not liable for copyright infringement because bootleg copies of a Charles Manson documentary were sold on the site. The case was one of several recently that have tested provisions of the Digital Millennium Copyright Act, a 1998 law meant to stimulate Internet commerce while protecting copyrights. Read The Order (Hendrickson v. eBay, Inc.) [PDF]

    August 24, 2001

  • The University of Wisconsin's patent agency filed a lawsuit against a California company that funded pioneering stem cell research to make sure more firms could have access to the work. The Wisconsin Alumni Research Foundation asked the U.S. District Court in Madison to stop Geron Corp. of Menlo Park, Calif., from trying to limit the foundation's ability to work with other researchers to develop new stem cell types. Also see
  • More than 50 music publishers and songwriters filed a copyright infringement suit against Web music firm Inc. The suit seeks actual damages and profits of and alternatively statutory damages of $25,000 per song as well as a permanent injunction against In their complaints, they allege that San Diego-based is liable for direct infringement by converting songs to the MP3 format, a compression format that turns music on compact discs into small digital files. See for further details.
  • According to a recently released study, the system set up to resolve disputes over Internet addresses can be easily manipulated to favor trademark holders. The dispute-resolution system arose as a way to address "cybersquatting," the process of buying a domain name with hopes of reselling it at a high price to a person or company who shares that name. Since ICANN approved the system in late 1999, complainants have won 81 percent of the more than 3,000 cases filed. See for more details.

2003 The Federalist Society