The following summary outlines the first three panels of the conference. Additional case backgrounds provided by Oyez.
Chicago-Kent IP Fellow Christi Guerrini moderated this panel on a case regarding whether federal courts have exclusive jurisdiction over cases involving patent law, even when a patent issue is not the primary issue—which in this instance was a claim of legal malpractice. The Supreme Court decided against elevating patent malpractice claims to the federal level, recognizing the authority of state courts to decide state law claims with embedded patent issues. Panelists Jane Webre (counsel to Gunn) and Ronald Mallen (amicus curiae) drew out the implications of the decision; in particular, Webre noted that more patent-related claims will likely remain at the state rather than federal court level and that this had in fact been standard practice prior to a 1988 decision that broadly expanded Federal Circuit jurisdiction (Christianson v. Colt Indus.). Both panelists agreed that this decision is unlikely to tamper with federal jurisprudence on patent issues.
In this case, the Supreme Court asked whether reverse payment agreements are per se lawful, rather than presumptively anticompetitive. The situation is a familiar one in the pharmaceutical industry, where a powerful, brand-name company with an exclusive right to sell a particular product might provide a payoff to a potential generic competitor to keep the competitor from entering the market. The court maintained that lawsuits may be brought against the brand-name manufacturers but that the payments in question are not presumptively illegal; such a distinction is to be determined by proper antitrust law scrutiny. Mark Lemley (counsel to amici curiae) and Robert Breisblatt (counsel to amici curiae) outlined the case and its implications, agreeing that the opinion does not offer much guidance for future cases but that, for the moment, it spells partial victories for the FTC and for consumers.
Professor David Schwartz led a panel on Already v. Nike, a case highlighting the impact of a covenant-not-to-sue on declaratory judgment jurisdiction in trademark cases. In the opinion, the Court decided unanimously that Already’s counterclaim against Nike to create a justiciable controversy was not sufficient to allow the District Court to exercise subject matter jurisdiction. James Dabney (counsel to Already) argued that the case was about federal court judicial power, pointing out that how cases are defined affects the scope and power with which federal courts can overturn the PTO. Professor Mark Janis joined in Dabney’s assessment that the decision will lead to closer scrutiny of covenants-not-to-sue in the future.
Look for more SCIPR 2013 highlights soon.