15 IPL Newsl. 1 (1996-1997)

handle is hein.journals/iprolane15 and id is 1 raw text is: 



                   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
   However, if the decision in Vitronics Corp. v. Concep-


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