Our Patent Law Institute live blog continues with the panel entitled, “Recent Cases”. The panel features Robert Neuner, Senior Counsel at Hoffman & Baron, LLP, where he has extensive experience and success in the pretrial, trail, and appeal of patent, copyright, trademark, and trade dress cases. This panel focuses on Microsoft v. i4i, Global-Tech Appliances v. SEB S.A., and Therasense, among others. Here are a few of the highlights from this panel:
3 Cases Decided by the Supreme Court:
Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. – This case involved the interpretation of two competing assignments executed before the invention was conceived or reduced to practice. The Supreme Court found that the Bayh-Dole Act did not automatically divest inventors of their rights inventions conceived or reduced to practice with the help of federal funds.
Global-Tech Appliances v. SEB S.A. – Dealt with Section 271(b) of 35 U.S.C. The Supreme Court held that “induced infringement under Section 271(b) requires knowledge that the induced acts constitute patent infringement.” The Supreme Court found that the alleged infringer had knocked-pff the plaintiff’s product, and then went to an attorney of the U.S. to conduct a patentability search without informing the attorney they had knocked-of the product abroad.
Microsoft Corp. v. i4i Ltd. Partnership – The issue had to do with the presumption of validity provided for by Section 282 and the issue of evidence that had not been presented to the board for validity. This affects how the evidence is introduced at trial.
3 Cases Presently Before the Supreme Court
Mayo Collaborative Servs. v. Prometheus Labs, Inc. – The issue before the Supreme Court has to do with whether or not you’re dealing with an abstract claim. The measuring of the level of a drug in a patient’s system is questionable as the drug at hand changes the body.
Caraco Pharm. Labs, Ltd. v. Novo Nordis A/S – The issue in this case is statutory construction. There is a challenge to what qualifies as “patent information” and what you can compel a drug manufacturer to do or not do under the FDA. Another issue is the definition and court’s interpretation of the word “and”. Strict construction by the Supreme Court will affirm the lower Federal Court decision.
Kappos v. Hyatt – Involves Section 145 of the Patent Act. The questions in this case are whether a plaintiff who files a civil action in federal district court against the Director of the USPTO pursuant to Section may introduce new evidence that could have been presented to the PTO, as well as whether the plaintiff is allowed to introduce new evidence under Section 145,where the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the PTO’s decision.
Federal Circuit Decisions
Therasense Inc. v. Becton Dickinson and Co. : The issue of inequitable conduct fit so well. The court held that both the materiality and and intent prongues of the doctrine of inequitable conduct must be established by clear and convincing evidence.
TiVo, Inc. v. EchoStar Corp. – Contempt proceeding in patent cases should be established. The district court ruled that EchoStar was in contempt of the injunction to two respects: 1. the redesigned infringing products continured to infringe and 2) Ecchostar failed to comply with the disablement provision in the court’s order requiring TiVo to disable DVR technology completely from the receivers adjudged to be infringing.
Up next: Rules and Regs That Are/Are Not Changing for 2012
Tags: Patent Law Institute 2012, PLI, PTO, Robert Neuner
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