Importation and Injunctions Patent Law

Bayer v Housey Screening technique Looking for “agents” that inhibit or promote activity of a “protein of interest” Eg, disease-associated protein (mutation product, for example): how do various “agents” affect it?

Importation as infringement Traditional test: geographic connection to infringing acts Section 271(g): explicitly prohibits importing “product which is made by a process”

Section 295 Presumption Evidentiary problems of process claim infringement abroad –Substantial likelihood –Reasonable efforts

Novel claims “Information importation” Attenuated “product” of a process –Screening  product candidates  product –Is the final product a product “of the process” of screening? –271(g)(1) relevant here...

‘411 Patent ABSTRACT: A method and system for placing an order to purchase an item via the Internet. The order is placed by a purchaser at a client system and received by a server system. The server system receives purchaser information including identification of the purchaser, payment information, and shipment information from the client system. The server system then assigns a client identifier to the client system and associates the assigned client identifier with the received purchaser information. The server system sends to the client system the assigned client identifier and an HTML document identifying the item and including an order button.... In response to the selection of the order button, the client system sends to the server system a request to purchase the identified item. The server system receives the request and combines the purchaser information associated with the client identifier of the client system to generate an order to purchase the item in accordance with the billing and shipment information whereby the purchaser effects the ordering of the product by selection of the order button.

US Patent 5,960, A method of placing an order for an item comprising: under control of a client system, displaying information identifying the item; and in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system; under control of a single-action ordering component of the server system,receiving the request; retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and generating an order to purchase the requested item for the purchaser identified by the identifier in the received request using the retrieved additional information; and fulfilling the generated order to complete purchase of the item whereby the item is ordered without using a shopping cart ordering model.

US Patent 5,960, A server system for generating an order comprising: a shopping cart ordering component; and a single-action ordering component including: a data storage medium storing information for a plurality of users; a receiving component for receiving requests to order an item, a request including an indication of one of the plurality of users, the request being sent in response to only a single action being performed; and an order placement component that retrieves from the data storage medium information for the indicated user and that uses the retrieved information to place an order for the indicated user for the item; and an order fulfillment component that completes a purchase of the item in accordance with the order placed by the single-action ordering component.

US Patent 5,960, The server system of claim 9 wherein the request is sent by a clientsystem in response to a single action being performed.

What it Boils Down To: The client system [i.e., user’s or customer’s computer] is provided with an identifier that identifies a customer [in a file permanently stored on customer’s computer, e.g., a “Cookie” file]. The client system displays information [about an item to purchase]. [After the customer indicates he or she wants to buy something,] the client system sends to a server system the provided identifier and a request to order the identified item. The server system uses the identifier to identify additional information needed to generate an order for the item and then generates the order. -- from specification

The Wall Street Journal, Friday, December 3, 1999 Amazon.com Is Granted an Injunction In barnesandnoble.com Patent Dispute By Scott Thurm and Rebecca Quick Staff Reporters of The Wall Street Journal A federal district judge in Seattle granted Amazon.com Inc. a preliminary injunction in a patent dispute, barring rival barnesandnoble.com Inc. from using a one-click system for online orders. U.S. District Judge Marsha J. Pechman late Wednesday ordered barnesandnoble.com to stop using its Express Lane service by tomorrow. In her ruling, Judge Pechman said barnesandnoble.com could avoid infringing on Amazon.com's patent "by simply requiring users to take an additional action to confirm orders placed by using Express Lane."

Federal Circuit holding District court erred in ignoring Compuserve Trend prior art – p –Creates doubt about Amazon’s “reasonable likelihood of success on the merits” Does this mean Amazon patent is invalid? –Subsequent settlement...

“Public Interest” Element Federal Circuit has usually identified public interest with patent enforcement Some exceptions...

eSpeed v. BrokerTec, 69 U.S.P.Q.2d 1466 (D.C. Del. 2004) “After reviewing the submissions of the parties and the government, and the applicable law, I am persuaded that the public interest strongly outweighs any private interest eSpeed may have in obtaining a preliminary injunction. eSpeed has failed to make a persuasive showing that irreparable harm will result if BrokerTec’s conduct is not enjoined. Because eSpeed has not adequately shown that it is entitled to emergency relief, its motion for a preliminary injunction will be denied.”