Among the last acts of the annual meeting, the ABA House of Delegates adopted several resolutions of importance to the intellectual property bar, including one that will allow the ABA to file an amicus brief in what's expected to be a landmark case before the Supreme Court.
The ABA can now file an amicus brief in Bilski v. Doll, a case about business method patents that was granted certiorari by the Supreme Court last November. The case asks whether a “process” must be tied to a machine or transform something into a different state in order to be eligible for patent protection and whether that test contradicts congressional intent.
It’s the most important patent case to be taken up by the high court in 50 years, said Rob Lindfjeld, secretary of the ABA’s Intellectual Property Law Section.
“We’re really worried that the Supreme Court will do considerable damage to patents in the area of methods of doing business that should be entitled to protection and swing the pendulum way too far and hurt the patent system for a long time,” Lindfjeld said in an interview.
The proposed ABA amicus brief, as laid out in the resolution, will argue that the patent owners in Bilski v. Doll aren't eligible for a patent because they're trying to patent an abstract idea, explained Lindfjeld, who is general counsel and chief IP counsel at Woburn, Mass.-based Nantero Inc.
“It’s great that the ABA is going to weigh in on Bilski because it’s one of the more important cases that the Supreme Court has faced on patents,” said Mark Partridge, an ABA member and an attorney with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson in Chicago.
Another set of IP resolutions adopted by the House of Delegates aims to improve the way in which claims of inequitable conduct are handled in court. The argument that the patent holder engaged in inequitable conduct before the U.S. Patent Office and that the resulting patent is thus unenforceable is a common defense in infringement cases. The ABA resolution calls for the defense to be restricted but not eliminated. (Such evenhandedness is not surprising given that lawyers in the IP bar often represent both defendants and plaintiffs.)
"People assert inequitable conduct almost too freely. What it does is clog up the courts, and it unfairly punishes people for conduct in which they could be completely uninvolved,” Lindfjeld said. “It has been used as a Draconian weapon by defendants in patent litigation.”