On December 28, 2015, the United States Court of Appeals for the Federal Circuit reversed a $63.7 million jury verdict against Cisco Systems. The Court, in an opinion by Chief Judge Prost (pictured), concluded that substantial evidence did not support the jury’s finding that Cisco’s devices, when used, perform the “running” step of the asserted claims.
Commil owns U.S. Patent No. 6,430,395, which relates to a method of providing faster and more reliable handoffs of mobile devices from one base station to another as a mobile device moves throughout a network area. In 2007, Commil brought a patent infringement action against Cisco, which makes and sells wireless networking equipment. In a first jury trial, Commil alleged that Cisco directly infringed the ’395 patent by making and using networking equipment, and also that Cisco induced its customers to infringe by selling them the infringing equipment. The jury concluded that Commil’s patent was valid, that Cisco was liable for direct but not induced infringement, and awarded $3.7 million in damages. Commil then filed a motion for a new trial on induced infringement and damages, which the district court granted. The second jury concluded that Cisco was liable for induced infringement and awarded $63.7 million in damages.
Bruce Kisliuk retired from the United States Patent and Trademark Office last summer as the Deputy Commissioner for Patent Administration after a 30+ year career at the Office. He is now a senior patent counselor with Wilson Sonsini Goodrich & Rosati. I had always wanted to interview Kisliuk, but the opportunity never presented itself until recently. I interviewed Kisliuk on November 24, 2015, in a wide ranging conversation that lasted nearly 90 minutes.
In addition to a prolonged and detailed “get to know you” conversation where we dive into his musical tastes, that he is a history buff, and not at all into either Star Trek or Star Wars, we talked substantive patent law for an hour. What follows are the highlights of our conversation.
Several weeks ago, in a per curiam decision with only Judge Newman dissenting, the United States Court of Appeals for the Federal Circuit denied the Sequenom petition for rehearing en banc. See Ariosa Diagnostics, Inv. v. Sequenom, Inc. Sequenom, the patent holder, had already hired Thomas Goldstein, the founder of SCOTUS blog and renowned Supreme Court advocate, as a part of their appellate team. The case will now undoubtedly move to the Supreme Court. We can only hope that the Supreme Court will take the case and once and for all decide whether they intended for all genomic innovations, no matter how revolutionary, to be patent-ineligible.
If you look quickly at the per curiam decision, you might mistakenly believe that there is a unanimity of thought at the Federal Circuit on the issue of patent eligibility. After all, the case was denied en banc rehearing. But there were three separate written opinions, two concurring with the denial and only Judge Newman dissenting. In truth, if you take the time to read the opinions, you realize that all four of the Judges who signed opinions believe the Supreme Court is wrong on patent eligibility. Given Judge Linn’s concurring opinion at the panel level, we can safely conclude that he too believes the Supreme Court is wrong on this matter.
After the brief per curiam decision, several written opinions followed. First, Judge Lourie, who was joined by Judge Moore, wrote that while the claims at issue may be susceptible to challenge for being too broad or indefinite, “they should not be patent-ineligible on the ground that they set forth natural laws or are abstractions.”
Lourie would go on to conclude:
In sum, it is unsound to have a rule that takes inventions of this nature out of the realm of patent-eligibility on grounds that they only claim a natural phenomenon plus conventional steps, or that they claim abstract concepts. But I agree that the panel did not err in its conclusion that under Supreme Court precedent it had no option other than to affirm the district court.
Even Judge Dyk, who is more skeptical of patents than most of the other judges on the Federal Circuit, thinks the Supreme Court went too far in Mayo, but wrote separately that he believes that any additional guidance must come from the Supreme Court, not the Federal Circuit.
In an uncharacteristically short dissent, Judge Newman wrote:
Precedent does not require that all discoveries of natural phenomena or their application in new ways or for new uses are ineligible for patenting… The new diagnostic method here is novel and unforeseen, and is of profound public benefit… The panel’s decision to withhold access to patenting, now endorsed by the en banc court’s refusal to rehear the case, is devoid of support.
Judge Newman also went on to remind us all that patenting “facilitate[s] the public benefit of provision of this method through medical diagnostic commerce, rather than remaining a laboratory curiosity.”
We haven’t heard the last of this case. The question remains, however, whether the Supreme Court will take the case when given the opportunity or whether they will allow this ruling and the confusion to remain indefinitely.
Edward Jung is one of the co-founders of Intellectual Ventures, one of the largest patent holders in the world. Jung currently serves as chief technology officer at IV, and is responsible for setting strategic technology and new business models for the company.
I recently had the opportunity to interview Jung. The full transcript of our 35-minute conversation appears on IPWatchdog.com. What follows are the highlights of our conversation.
At some point in time in the not too distant future, the USPTO will grant U.S. Patent No. 10,000,000. That’s a nice round number, but we just crossed the nine million threshold with the issuance of U.S. Patent No. 9,000,000 on April 7, 2015. At this pace, the ten million threshold will come sometime in June 2018.
Why even think about U.S. Patent No. 10,000,000 at this time? The simple answer is because it will add one more digit – an eighth digit – to utility patent numbers. Since the dawn of the computer age, computer systems have handled only 7 digit patent numbers. Without deliberate consideration and action, moving to an eighth digit may not be as smooth a transition as you may want to believe.
12.2.15 | Patent Issues | Gene Quinn
- Supreme Court accepts Inter Partes Review Appeal
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