Intellectual property kept its place in the public spotlight in 2012, with patent trolls running rampant and smartphone wars that seemed to never end.
These big stories, with their technology-based patents in dispute, naturally dominated the headlines. But battles over gadgets weren't the only actions in court. Companies skirmished over biomedical and life sciences patents, too. And other court battles featured copyrights and the definition of what constitutes "fair use" in an age of ever-changing technology.
The U.S. Supreme Court took an active interest in IP in 2012, issuing some important decisions and granting cert to several more. This was also the year in which the U.S. patent system underwent the second phase of the first major patent reform in half a century.
With IP growing in prominence and importance both to businesses and to the general public, it's difficult to single out the most important cases of 2012. But here, we present our view of the top IP litigation wins of the past year.
Prometheus Bound
The U.S. Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories Inc. sent shock waves through IP circles. In a unanimous ruling, the court struck down two patents that Prometheus, a unit of Nestle SA, had sought to enforce against Mayo Laboratories, concluding that the patent claims were directed to underlying laws of nature and therefore not eligible for patent protection.
The patents in question concerned a method for monitoring a patient's blood to determine the best drug dosage. Prometheus markets a diagnostic test that uses the technology covered by the two patents to help doctors monitor patients' with certain gastrointestinal disorders and autoimmune illnesses. A unit of the Mayo Clinic in Rochester, Minnesota, argued that the method used to determine dosage was a natural phenomenon and therefore not patentable. The justices agreed.
Many patent experts lamented the decision, saying it would lead to the demise of diagnostic-method patents and affect the profitability of personalized medicine. The patents' opponents, meanwhile, had argued that allowing the patent to stand would have hampered medical research.
Legal reverberations from Prometheus were almost immediate. Within a week of the decision, the Supreme Court sent a separate case concerning the patentability of human genes— The Association of Molecular Pathology v. Myriad Genetics Inc.— back to the Federal Circuit Court of Appeals for reevaluation in light of its decision in Prometheus . But in a move that illustrates the often-conflicting views of the Federal Circuit and the Supreme Court, the Federal Circuit once again ruled in the remanded case that an isolated piece of human genetic code can be patented.
The Myriad case concerns the Utah-based company's patents on genes that correlate with increased risk of hereditary breast and ovarian cancer. Scientists and doctors challenged the patents, saying they impede their ability to conduct research and help patients. The American Medical Association, AARP, and women's health groups all filed amicus briefs supporting the plaintiffs.
Now the Myriad case is back in the hands of the Supreme Court, which in December announced it would hear the case. The legal question the justices will answer is whether isolated genes are "products of nature" that may not be patented or "human-made inventions" eligible for patent protection.
The Endless Proxy War
Apple Inc. v. Samsung Electronics Co. has become synonymous with the seemingly endless smartphone wars dominating the patent litigation landscape. It was the first of a series of lawsuits being fought worldwide between Apple and Samsung regarding the applications and design of smartphones and tablets—a fight many believe boils down to a proxy war between Apple and Google, creator of the popular Android operating system.
In this highly publicized case, which The Wall Street Journal dubbed "The Patent Trial of the Century," Apple accused Samsung of infringing its utility and design patents, and Samsung countersued, claiming Apple infringed its patents. In August, after a three-week trial and three days of deliberations in federal district court in San Jose, California, the jury came back with its verdict. It found that Samsung's mobile devices infringed six of Apple's patents, and Apple's devices did not infringe any of Samsung's patents. It awarded Apple $1.05 billion in damages.
Subscribe to Corporate Counsel
