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15 IPL Newsl. 1 (1996-1997)

handle is hein.journals/iprolane15 and id is 1 raw text is: A PUBUCATION OF THE AMERICAN BAR ASSOCIATION SECTION OF INTELLECTUAL PROPERTY LAW VOLUME 15, NUMBER 1 JOHN R. KIRK As I embark on my term as Chair of the ABA Intellec- tual Property Law Section, I am faced with an exciting challenge of overseeing one of the largest, growing sec- tions of the ABA. I am deeply aware that our Section's first commit- ment is to you, our members, and the entire legal profes- sion. With that in mind, I implemented a Monthly Bulletin to keep members updated on administrative matters, upcoming events, pending resolutions, and ami- cus brief filings of our Section. This quarterly Newslet- ter Message will be geared more towards recent substantive developments in the field and with our Sec- tion. You can expect to see some changes in the look of the Newsletter I am pleased to report that this Section takes one of the most proactive positions with Congress, the PTO, and the Library of Congress. This year promises to be an active one in the intellectual property field with the Supreme Court to hear oral arguments in October in the Hilton Davis case; the recent pronunciation by the Fed- eral Circuit as to the proper evidence to be considered in issuing a Markman ruling; the newly enacted anti- counterfeiting law aimed to prevent counterfeiting of trademark and copyrighted goods by imposing tougher sanctions; the congressional approval during the last minutes of the 104th Congress of the trade secret bill, H.R.3723, which provides federal criminal penalties for the theft of trade secrets; and the appropriations bill signed into law by President Clinton on September 30 which amends section 287 of Title 35 denying remedies to owners on medical or surgical procedures when those patents are infringed by doctors or other medical practi- tioners. This same bill diverts $54 million of PTO rev- enues to support other government programs. However, the omnibus patent reform bill, H.R.3460/S.1961, relat- ing to the twenty-year patenf term extension, the publi- cation of patent applications eighteen months after filing, prior domestic user rights, and patent reexamina- tion reform was dropped by Congress at the last minute from the consolidated appropriations bill. So we will FALL 1996 have to wait until next year to see if the patent reform bill will be enacted. Turning to the recent ongoings in patent law, on Octo- ber 15, the Supreme Court will hear oral arguments in the Warner-Jenkinson Co.; Inc. v. Hilton Davis Chemical Co. case regarding the application of the doctrine of equivalents. We can be assured that the Section will watch this decision carefully, along with all those patent litigators out there, as the Supreme Court will again define the jury's role or lack thereof in patent infringe- ment cases. That is, the Supreme Court will decide whether infringement under the doctrine of equivalents is a question of fact to be decided by a jury or manner of law to be decided by a judge. As many of you know, in Markman v. Westview Instruments, Inc., the Supreme Court unanimously ruled that there is no Seventh Amendment right to have a jury interpret the scope of the claims in patent infringement suits. As a result, the so-called Markman hearings are being conducted around the nation where the judge interprets the scope of the claims long before the trial, usually in the context of a summary judgment motion. This decision will be determinative of the ultimate issue of literal infringement. In recently reported cases, Elf Atochem North America v. Libbey-Owens-Ford Co. and Moll v. Northern Telecom, the Markman hearings involved testimony from expert witnesses, introduction of extrinsic evidence such as technical dictionaries, chemistry textbooks, deposition statements of witnesses, and affidavits by technical witnesses to assist in claim interpretation. However, if the decision in Vitronics Corp. v. Concep- VISITHE SCTIONONTFE A0'SWBIT

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