Recent Significant Patent Law Decisions

By David Elkins

Intellectual property practitioners and owners are awaiting what could be a revolutionary decision from the United States Supreme Court in KSR International Co. v. Teleflex, Inc., a challenge to the Federal Circuit Court of Appeals’ teaching-suggestion-motivation test for determining obviousness. In the meantime, two recent patent decisions – while perhaps not as sweeping in scope – merit attention. One decision will affect past and future patent licensing. The other may rein in claims of inducing infringement and spark an independent reason to seek opinions of counsel as to noninfringement and/or invalidity.

Continuing its recent interest in reviewing important Federal Circuit patent decisions, the United States Supreme Court shook up the world of patent licensing with its January 9, 2007 decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. __, 127 S. Ct. 764 (2007). The 8-1 decision, authored by Justice Scalia (Justice