Volume 10 | Number 1

You may download and read the Full Edition, or click on a citation below for the individual articles. Journal content dating from 2005 is available on the Lexis-Nexis database. Content dating from 2006 is available on the HeinOnline database. Journal content, starting with Volume 8, is now available on the Westlaw database. (subscriptions required).

Clay Calvert; Kayla Gutierrez and Christina Locke
10 Wake Forest Intell. Prop. L.J. 1

Thousands of hard copies of newspapers across the country—particularly editions of college newspapers—are reported pilfered each year. But just as the theft of print newspapers can occur at news racks, can online news stories that flow on the Internet also be stolen?

That question, as this article demonstrates, is no idle academic query or a wasted exercise in verbal gymnastics distinguishing newspapers from news and news stories. In fact, it is at the heart of some battles now being fought over news on the Internet.

In July 2009, the Associated Press settled for an undisclosed dollar amount a lawsuit asserting that, in layperson’s terms, its news content was being stolen by the All Headline News Corp. (hereinafter “AHN” or “All Headline News”). The AP alleged in its January 2008 complaint that “AHN has no reporters and is simply a vehicle for copying news reports and misappropriating news gathered and reported by real news services such as AP.” As such, the AP asserted that AHN was “free-riding on AP’s significant and costly efforts to collect, report and transmit newsworthy information,” thereby creating a low-cost news service with “no journalistic infrastructure” that “directly competes with AP’s own news services.” In Associated Press v. All Headline News Corp., the AP successfully reached back in time and stretched a ninety-one-year-old precedent—one developed many decades before the Internet enabled the type of appropriation engaged in by AHN—found in the United States Supreme Court’s opinion in International News Service v. Associated Press.

Part I of this article analyzes the case of Associated Press v. All Headline News Corp., tracing it from the filing of the complaint through the July 2009 settlement. Importantly, it uses the actual pleadings and briefs filed by the parties, as well as other background information about the parties, to better contextualize the story behind the case. Part II then explores the legal precedent underlying the hot news misappropriation theory that was at issue in the case, as well as some of the criticisms and comments that legal scholars have launched against it over the years. Next, Part III goes beyond a pure legal analysis to explore the potential implications of the hot news misappropriation doctrine for a digital culture in which freshness and up-to-the-minute information is privileged and prized. Part III also identifies the different interests at stake in cases like Associated Press v. All Headline News Corp. Finally, Part IV concludes by suggesting future avenues of research related to the conduct of companies such as All Headline News Corp., including analyzing their behavior from an ethical perspective, not simply a legal one. In brief, journalism ethicists should analyze both the case and hot news doctrine from their viewpoint and position.

Lynn Tyler
10 Wake Forest Intell. Prop. L.J. 30

In 2004, this author published an article that analyzed the requirements for proving the defense of inequitable conduct to a claim of patent infringement. In particular, the article focused on the second element of inequitable conduct – intent to deceive – and whether it can be inferred from the failure to disclose a material or highly material reference. The article noted that in Kingsdown Med. Consultants Ltd. v. Hollister, Inc., the Federal Circuit ruled en banc in relevant part that “a finding that particular conduct amounts to “gross negligence” does not of itself justify an inference of an intent to deceive.”

The court overruled Driscoll v. Cebalo, which had concluded that gross negligence would support the finding of an intent to deceive. The court’s en banc decision in Kingsdown rejected this rule. Nonetheless, the earlier article reviewed at least four Federal Circuit decisions that appeared to have resurrected the overruled standard from Driscoll. An early case to have gone astray on this issue was Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., which inexplicably relied solely on Driscoll as support for the very proposition on which Driscoll had been overruled by Kingsdown, namely, “[I]ntent may be inferred where a patent applicant knew, or should have known, that withheld information would be material to the PTO’s consideration of the patent application.”

It is now five years later, twenty years after the Kingsdown decision, and unfortunately the conflicting state of the case law has not improved. On the one hand, there have been several Federal Circuit decisions that have relied upon or otherwise remained true to Kingsdown by finding that the failure to disclose a material reference alone is insufficient to support a finding of an intent to deceive the PTO and, therefore, inequitable conduct. Notwithstanding its awareness of the issue, however, in the past five years the Federal Circuit has issued several more precedential opinions that continue to rely upon Critikon or its erroneous version of the standard. Some of these cases are not necessarily inconsistent with Kingsdown, while several other decisions are difficult to reconcile with the Kingsdown standard for finding an intent to deceive.

Against this background, this article will first review in more detail the post-2004 Federal Circuit cases that have followed Kingsdown and held that the intent to deceive cannot be inferred merely from the failure to disclose a known material reference. Second, the article will analyze in more detail post-2004 Federal Circuit cases that have continued to inappropriately follow Critikon or other cases upholding a finding of intent to deceive based solely on the failure to disclose a known material reference. Finally, the article will review several reasons, apart from its precedential status, that the Federal Circuit should uniformly and strictly enforce the higher Kingsdown standard for proving an intent to deceive.

Aileen M. McGill
10 Wake Forest Intell. Prop. L.J. 69

In response to concerns that patent protection for pharmaceuticals negatively affected world health, the World Trade Organization (WTO) issued the Doha Declaration in 2001, allowing member nations to issue compulsory licenses for patented pharmaceuticals during a public health crisis. The terms of this declaration allow countries to determine what constitutes a public health crisis, what terms are appropriate for compulsory licenses, and what medications they should be entitled to produce.

This article argues that the Doha Declaration has not served countries most in need of inexpensive medications: least developed countries with high rates of HIV/AIDS. The terms of the Doha Declaration are too broad, allowing countries to issue compulsory licenses for medications that do not treat life-threatening illnesses, such as Viagra and Plavix. Many countries have seen a dramatic drop in Foreign Direct Investment (FDI) as a result of extensive compulsory licensing of patented pharmaceuticals, making least developed countries hesitant to invoke the terms of the Doha Declaration for fear of similar losses in FDI. To safeguard the interests of countries facing severe health crises, the WTO should establish an administrative body to determine when a country may issue compulsory licenses of patented pharmaceuticals.