The Supreme Court has decided three cases this past month that could have a big effect on patent law. To help you understand the significance of these decisions and their implications, PLI is offering three timely and topical One-Hour Audio Briefings.
1. June 24th – Global-Tech v. SEB: Supreme Court Holds knowledge Requirement Satisfied by Willful Blindness for Patent Infringement: On May 31, 2011, the U.S. Supreme Court handed down its decision in Global-Tech Appliances, Inc. v. SEB S.A. In an 8–1 decision, with Justice Alito writing for the Court, the Court concluded that induced infringement requires knowledge that the induced acts constitute patent infringement, not just knowledge that it was encouraging certain acts which just happened to infringe a patent. Examining the statutory language and tracing pre–adoption case law, the Court further concluded that a defendant’s deliberate indifference to a known risk that a patent exists would not be sufficient to demonstrate knowledge, which was the Federal Circuit’s view below, but that “willful blindness,” well–established in the criminal law context, is enough to satisfy the knowledge element. Although it announced a different standard, the Court concluded that the evidence in this case easily satisfied that standard. For such a doctrine to apply, a defendant must subjectively believe that there is a high probability that a fact exists, and must take deliberate actions to avoid learning of that fact. In dissent, Justice Kennedy argued that the Court took a step too far in concluding that willful blindness is a form of knowledge, and would have required actual knowledge. This briefing will be conducted by Peter J. Brann, a partner in the law firm of Brann & Isaacson, whose practice focuses on intellectual property litigation, R. Ted Cruz of Morgan, Lewis & Bockius LLP and counsel of record for SEB, and William Dunnegan of Dunnegan LLC and counsel of record for Global-Tech Appliances.
2. June 27th – Stanford v. Roche: Supreme Court Holds Bayh-Dole Act Does Not Change Inventor’s Rights in Federally Funded Inventions: On June 6, 2011, the Supreme Court decided a case with important implications for Universities that receive federal research funding, other federally funded contractors, and the companies that do business with federal contractors. The question presented to the Court was whether the Bayh-Dole Act, which governs ownership of federally funded inventions as between the government and its contractors, affects the traditional rule that ownership in an invention originates with the employee-inventor. The Court, in a 7-2 decision, affirmed the Court of Appeals for the Federal Circuit’s decision that the traditional rule governs even if the invention was developed with federal funding. To explain the significance of Stanford v. Roche and the implications for patent ownership, technology transfer, and beyond, PLI is presenting a discussion between Donald B. Ayer, a partner in the law firm of Jones Day, who argued the case on behalf of petitioner Stanford, and Mark C. Fleming, a partner in the law firm of Wilmer Cutler Pickering Hale & Dorr LLP who argued the case on behalf of respondent Roche.
3. June 30th – Microsoft v. i4i: Supreme Court Upholds “Clear and Convincing Standard” – Is it Really Business as Usual?: For nearly three decades, the Court of Appeals for the Federal Circuit has required litigants defending a claim of patent infringement to prove invalidity by clear and convincing evidence. In its recent Microsoft v. i4idecision, the U.S. Supreme Court agreed with the Federal Circuit’s interpretation of 35 USC § 282 as embodying a “clear and convincing” evidentiary burden on accused infringers seeking to invalidate patents. The Court also held that the burden applies irrespective of whether the prior art relied on was considered by the Patent Office.
While i4i maintains the status quo with respect to the standard of proof, some commentators view the decision as a clear victory for patent holders. Both courts and juries will continue to apply this evidentiary standard to the facts of a particular case. While the Supreme Court declined to dictate the specifics of jury instructions in situations where the accused infringer asserts that the art relied on was not considered by the Patent Office, the Court did state that “a jury instruction on the effect of new evidence can, and when requested, most often should be given.” This leaves discretion to the lower courts to craft appropriate jury instructions to account for these scenarios.
Tags: Bayh-Dole Act, clear and convincing standard, Global-Tech Appliances v. SEB S.A., Microsoft v. i4i, patent infringement, Stanford v. Roche, Supreme Court, willful blindness
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