Intellectual Property and Tech Law Reports

Forrester Envt.l Servs., Inc. v. Wheelabrator Techs.,Inc.

Plaintiffs Forrester Environmental Services, Inc. and Keith E. Forrester (collectively “Forrester”) appeal from a final judgment of the United States District Court for the District of New Hampshire. The district court granted summary judgment for defendant Wheelabrator Technologies, Inc. (“Wheelabrator”) regarding Forrester’s business tort claims based on New Hampshire law. Forrester contends that the district court lacked subject-matter jurisdiction over its state law claims and, in the alternative, that the district court erred on the merits.

We conclude that the district court lacked subjectmatter jurisdiction over Forrester’s claims. We therefore vacate the district court judgment and remand to the district court with instructions to remand the case to New Hampshire state court.

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CLS Bank, Int'l v Alice Corp. Pty. Ltd.

Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101. An equally divided court affirms the district court’s holding that the asserted system claims are not directed to eligible subject matter under that statute. AFFIRMED

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Sanofi-Aventis Deutschland, GMBH v. Genentech, Inc.

This case requires us to determine whether, based on a final judgment in the United States that a patent is not infringed, a party is entitled to an injunction preventing the patent owner from proceeding in a previously-filed foreign arbitration of a license to that patent. We conclude that under Ninth Circuit law and the facts of this case, the injunction is not warranted. We therefore affirm the district court’s denial of the injunction.

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Bowman v. Monsanto

Held: Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder’s permission. Pp. 4–10.

(a) Under the patent exhaustion doctrine, “the initial authorized sale of a patented article terminates all patent rights to that item,” Quanta Computer, Inc. v. LG Electronics, Inc., 553 U. S. 617, 625, and confers on the purchaser, or any subsequent owner, “the right to use [or] sell” the thing as he sees fit, United States v. Univis Lens Co., 316 U. S. 241, 249–250. However, the doctrine restricts the patentee’s rights only as to the “particular article” sold, id., at 251; it leaves untouched the patentee’s ability to prevent a buyer from making new copies of the patented item. By planting and harvesting Monsanto’spatented seeds, Bowman made additional copies of Monsanto’s patented invention, and his conduct thus falls outside the protections ofpatent exhaustion. Were this otherwise, Monsanto’s patent would provide scant benefit. After Monsanto sold its first seed, other seed companies could produce the patented seed to compete with Monsanto, and farmers would need to buy seed only once. Pp. 4–7.

(b) Bowman argues that exhaustion should apply here because he is using seeds in the normal way farmers do, and thus allowing Monsanto to interfere with that use would create an impermissible exception to the exhaustion doctrine for patented seeds. But it is reallyBowman who is asking for an exception to the well-settled rule thatexhaustion does not extend to the right to make new copies of the patented item. If Bowman was granted that exception, patents onseeds would retain little value. Further, applying the normal rulewill allow farmers to make effective use of patented seeds. Bowman, who purchased seeds intended for consumption, stands in a peculiarly poor position to argue that he cannot make effective use of his soybeans. Bowman conceded that he knew of no other farmer who planted soybeans bought from a grain elevator. In the more ordinary case, when a farmer purchases Roundup Ready seed from Monsanto or an affiliate, he will be able to plant it in accordance with Monsanto’s license to make one crop. Pp. 7–10.

657 F. 3d 1341, affirmed

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Motiva, LLC v. ITC

Motiva, LLC (“Motiva”) appeals the decision of the International Trade Commission (“Commission”) that Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively “Nintendo”) did not violate § 337 of the Tariff Act of 1930 by importing, selling for importation, or selling certain video game systems and controllers. Because the Commission properly determined that a domestic industry does not exist nor is in the process of being established for U.S. Patent Nos. 7,292,151 (“’151 patent”) and 7,492,268 (“’268 patent”), we affirm.

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