Patent Law Practice Center

The Supreme Court Argument in Microsoft v. i4i: Will the Court Lower the Burden for Proving Patent Invalidity in Infringement Litigation?

The much anticipated oral arguments in Microsoft Corp. v. i4i Ltd. took place at the Supreme Court yesterday, April 18, 2011.  The question on all of our minds is whether the Supreme Court will change the burden of proof for parties alleging patent invalidity in infringement litigation from a clear and convincing standard to a preponderance of the evidence standard?   Did yesterday’s proceedings bring us one step closer to the answer?  Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent in this alert she wrote with her colleagues wherein they highlight the key points from the oral argument and provide some insight as to what the outcome of this important case may be.

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. On April 18, 2011, the U.S. Supreme Court heard oral argument in Microsoft Corp. v. i4i Ltd. P’ship, No. 10-290, the first case to squarely address whether the presumption of validity codified in the 1952 Patent Act mandates a heightened burden of proof for defendants challenging validity in a patent infringement action, e.g., where the prior art was never considered by USPTO. Microsoft contends that the burden should be no greater than a preponderance of the evidence when the USPTO did not consider the most relevant prior art during patent examination. i4i is one of the most significant patent cases in years, and one of the most significant business cases of the Court’s term. Beyond reducing the burden on accused infringers to prove invalidity in patent litigation, a lowering of the standard of proof could widely impact the value of patents. (more…)

Liability For Joint Infringement: Application Of Existing Case Law And A Call For En Banc Review

Prior to the Federal Circuit’s April 13, 2011 decision in the Mckesson Technologies Inc. v. Epic Systems Corp. case, many patent experts would have agreed that joint infringement liability has been a settled area of patent law.  However, the Court’s divided ruling demonstrates that might not be the case at all.  Our friends at Foley & Lardner sent in this article discussing the Court’s decision and what companies should consider doing  to ensure that it’s highest-value inventions are properly protected.

On April 12, 2011, the U.S. Court of Appeals for the Federal Circuit issued its decision in McKesson Technologies Inc. v. Epic Systems Corp., No. 2010-1291, slip op. (Fed. Cir. April 12, 2011). In this long-anticipated decision, a sharply divided panel composed of Judges Newman, Bryson, and Linn determined that a patentee who was unable to attribute the performance of all of the steps of the asserted method claims to a single entity had failed to prove direct infringement. The Court’s decision is notable in that it produced three opinions: a majority opinion, a concurrence suggesting that en banc consideration of the question of joint infringement might be warranted, and a vigorous dissent arguing that the majority—in its application of the “single entity rule”—had ignored controlling precedent. This opinion provides a useful discussion and application of the recent cases addressing liability for alleged joint infringement as well as a preview of a case that the Court might decide to review en banc. (more…)

New FTC Report Suggests Improved Alignment of Patent System With Competition Policy

Earlier this week, the FTC published an extensive report recommending ways to improve patent law policies.  The report emphasizes that the patent system and competition policy share the goal of promoting innovation that benefits consumers and explores ways to achieve greater alignment between the two.  Our friends at Foley & Lardner sent in this alert highlighting the key points of the report.

On March 7, 2011, the FTC released a 300-page report, The Evolving IP Marketplace: Aligning Patent Notice And Remedies With Competition. The Report assesses the patent system’s benefits and challenges as more companies shift to “open innovation” and increasingly rely on technology transfers to adopt inventions created outside their own R&D efforts. The FTC continues its engagement regarding the patent system that began with its 2003 Report, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, and continued with its 2007 Report, Antitrust Enforcement and Intellectual Property Rights: Promoting Innovation and Competition. The 2011 Report aims to better align the patent laws with competition policy by recommending improvements to two areas of patent law policies, namely how well a patent gives notice to the public of what technology is protected, and the remedies available for patent infringement.

Improving The (more…)

A New Doctrine of Equivalents? CAFC Defines “Use” Under §271

Gene Quinn, of IPWatchdog and Practice Center Contributor, passed along this article on the recent Federal Circuit decision Centillion Data Systems, LLC v. Qwest Communications International, Inc..  In the article, Quinn discusses the opinion and questions whether it will “breathe new life into the doctrine of equivalents” given the Court’s determination of the meaning of “use” of a system as a matter of law under 35 U.S.C. 271 (a).

On January 20, 2011 the United States Court of Appeals for the Federal Circuit issued a precedential opinion in Centillion Data Systems, LLC v. Qwest Communications International, Inc., in which the district court was affirmed in part and reversed in part. Of particular note here is the determination of the meaning of “use” as that term is used in 35 U.S.C. 271(a). The Federal Circuit, per Judge Moore (with Judges Lourie and Linn joining) acknowledged that the Court has never directly addressed the issue of infringement for “use” of a system claim that includes elements in the possession of more than one actor, thereby making the specific issue a question of first impression. (more…)

Claim To Standard: Simplifying Patent Infringement Analysis?

The following article was written by our friends at DLA Piper, Nicholas G. Papastavros and Melissa Reinckens.

In a recent opinion impacting a broad range of industries, the Federal Circuit addressed head on the role that standards play in patent infringement analysis. In Fujitsu Ltd. v. Netgear, Inc., the Federal Circuit held that “a district court may rely on an industry standard in analyzing infringement” instead of requiring proof of infringement for each individually accused device.

As quickly as the court established new precedent, however, it softened its impact, stating that “[o]nly in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.”Id. at 9. So while the decision crystallizes the role standards play in assessing infringement, the Federal Circuit stopped short of a blockbuster ruling.

Three appellants – U.S. Philips Corporation, Fujitsu Limited and LG Electronics, Inc. – asserted claims against Netgear based on individual patents. Each patent at issue claims a different feature of wireless communications technologies. Id. at 3. Appellants alleged that Netgear infringed the patents by implementing wireless networking protocols for sending and receiving messages between a base station and a mobile station. The infringement allegations implicated two standards: the Institute of Electrical and Electronics Engineers 802.11 2007 Standard (802.11) and the Wi-Fi Alliance Wireless Multi-Media Specification, Version 1.1 (WMM). Id. The appellants were part of a licensing pool purporting to include patents that any manufacturer of 802.11 and WMM compliant products must license. Id. (more…)