Intellectual Property Owners Association

Serving the Global Intellectual Property Community

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2007 Board Resolutions

Adopted December 4, 2007

[Access to Confidential Information in Sec. 337 Actions at the ITC] — RESOLVED, IPO supports, in principle, procedures in Section 337 litigation to increase appropriate access of in-house counsel, licensed in the U.S., to confidential information produced in Section 337 investigations.

[Appointment of Sec. 337 Judges at the ITC] — RESOLVED, IPO supports the work of the ITC to resolve IP disputes and believes in the importance of effective and qualified Section 337 judges. However, absent further study showing otherwise, IPO believes that currently available methods may and should be used to appoint such judges in accordance with the Administrative Procedure Act, and IPO thus opposes Section 601 of S. 1919.

Adopted September 9, 2007

[Venue] – RESOLVED, That IPO confirms its support for legislation to limit venue in patent suits in order to curb forum shopping by patent owners and declaratory judgment plaintiffs and, specifically, IPO supports an amendment to section 1400(b) of title 28, United States Code, to limit venue to a judicial district:

  1. where the defendant has its principal place of business or is incorporated;
  2. where the defendant has committed acts of infringement and has a regular and established physical facility;
  3. where activities relating to the invention — such as inventing, substantial research and development, or manufacturing – have taken place;
  4. where a plaintiff or a subsidiary has a place of business that is engaged in substantial: (a) management of research and development or manufacturing activities, related to the patent or patents in dispute; (b) research and development; or (c) manufacturing activities; or
  5. for foreign defendants that do not meet any of the above, according to section 1391(d) of this title.

[Inequitable Conduct] — RESOLVED, That IPO does not support the Applicant Quality Submission Requirement or the Inequitable Conduct provisions of S.1145 and H.R.1908. Further, IPO believes the standards for establishing the defense of inequitable conduct should be raised, not lowered or remain the same, in order to improve patent quality and the interaction between examiners and applicants. The addition of a submission requirement would only heighten the need for such reform. Further, IPO believes that an Applicant Quality Submission requirement is not necessary or good policy, and reiterates that ALL applicants must be equally subject to the substantive PTO rules.

[First-Inventor-to-File] — RESOLVED, That IPO supports in principle prompt adoption of the first-inventor-to-file provisions of S. 1145 and H.R. 1908, and opposes making adoption of first-inventor-to-file contingent upon a finding that other countries have adopted a grace period. [Staff Note: At time of adoption H.R. 1908 contained such an contingency]

[Prior User Rights] — RESOLVED, That IPO confirms its support for enhancement of prior user rights to all fields of technology, including the substantial preparation requirement and removing the 1-year reduction to practice requirement, and, in addition, supports making the defense available not only to the person who performed or caused the performance of the acts necessary to establish the defense, but also to any other entity that controls, is controlled by, or is under the common control of such person.

[Patent Marking Statute] — RESOLVED, That IPO opposes amending the patent marking statute to limit the period for which damages can be obtained without notice of infringement, as called for in Section 4(c) of S.1145.

[Micro-Entities] — RESOLVED, IPO does not support exempting certain applicants from substantive or procedural requirements of patent law. IPO believes that ALL applicants must be held to the same substantive and procedural standards.

[Patenting Tax Strategies] — – RESOLVED, that IPO opposes any change to 35 U.S.C. 101 or limiting remedies that would expressly provide different treatment to tax strategies or methods as unpatentable subject matter, particularly as currently worded in H.R. 1908, or other bills, since it is unnecessary given current legal theories of the validity of such patents.

[Standards Development Organizations] – RESOLVED, that IPO encourages standards organizations to consider the following principles when setting policies that may affect intellectual property rights related to a particular technology:

  • Clear and Open: Recognizing that standards may include patented technology, SDOs should have written patent policies that are clearly stated and available to all;
  • No-one-size-fits-all: Recognizing that no single patent policy is appropriate for every SDO, each SDO should have the flexibility to adopt a balanced, clear, and available patent policy that meets the needs of the SDO and its members; and
  • Balanced: Recognizing the importance of patent policies in standards setting, SDOs patent policies should appropriately balance the interests of all stakeholders, including patent holders and implementers of the standards.

Adopted June 12, 2007

[Patent Venue] — RESOLVED, IPO supports, in principle, legislation that would a) limit venue for civil actions for patent infringement to curb forum shopping by patent owners and b) make a corresponding change to limit venue for declaratory judgment actions relating to patents.

[Random Assignment for Patent Cases] — RESOLVED, IPO supports, in principle, a random assignment system that would ensure that cases relating to patent matters would be equally assigned to judges throughout a judicial district regardless of the division in that district within which a case was filed, unless that district should participate in a pilot program that dictates otherwise.

[Increased Funding for the ITC] — RESOLVED, IPO endorses, in principle, the ITC’s request for increased funding for fiscal year 2008 in order to address the substantial rise in the ITC’s caseload of Section 337 investigations by ensuring that the ITC has the necessary resources to hire the judges, specialized attorneys, and staff needed to protect owners of U.S. intellectual property rights from infringing imports.

[Genomic Research and Accessibility Act] — RESOLVED, IPO opposes the proposed legislation, H.R. 977.

Adopted March 28, 2007

[Inequitable Conduct Reform] – RESOLVED, IPO supports, in principle, legislation as recommended by the National Academies of Sciences to modify or remove the subjective elements of patent litigation in order to increase predictability of patent dispute resolution, and specifically, IPO supports legislation to (1) limit or eliminate the unenforceability defense based upon inequitable conduct in patent litigation, (2) eliminate the requirement to disclose the best mode contemplated by the inventor of carrying out the invention, and (3) allow enhanced patent infringement damages to be awarded for “willful” infringement only in limited circumstances, such as those set forth in IPO’s Amicus Brief filed in In Re Seagate Technology LLC.

 

[Codification of the law of Apportionment of Damages: Specific Features] – RESOLVED, IPO supports amending section 284 of title 35, United States Code by adding the following text after the first paragraph:

 

“Where an infringer shows that an apportionment of economic value is necessary to assure that damages based upon a reasonable royalty do not exceed the economic value properly attributable to the use made of the invention, such apportionment shall exclude from the reasonable royalty calculation the economic value shown by the infringer to be attributable to the infringer’s incorporation into the infringing product or process of features or improvements, whether or not themselves patented, that contribute economic value to the infringing product or process separately from the economic value properly attributable to the use made of the invention.Where the claimant shows that the use made of the invention is the basis for market demand for an infringing product or process, the royalty may be based upon the entire market value of the products or processes provided to satisfy that demand.

The court shall identify all factors relevant to the determination of a reasonable royalty under this section and the court or the jury, as the case may be, shall consider such factors in making the determination.”

 

[Federal Judiciary Pay] – RESOLVED, IPO supports, in principle, legislation to increase the salaries of the federal judiciary to restore those salaries to a level commensurate with historical norms and thereby preserve the independence of the federal judiciary.

[IPO Name Change] – RESOLVED, The following amendment to the Articles of Incorporation of Intellectual Property Owners, Inc. shall be submitted for a vote at the IPO Annual Meeting:

 

“The name of the Corporation is hereby changed to Intellectual Property Owners Association.”

 

Adopted Jan. 31, 2007

[Codification of the law of Apportionment of Damages: General] – RESOLVED, IPO believes that existing case law on damages in calculating a reasonable royalty is appropriate, and thus, IPO supports, in principle, amending 35 USC 284 to codify the existing law on damages for calculating a reasonable royalty. Further, IPO does not support the language contained in S.3818 [109th Congress] related to the amendment to Section 284 of Title 35, U.S. Code on damages.