Patent Law Practice Center

Microsoft v. i4i: The Amici Have Spoken

On April 18, 2011, the Supreme Court will hear the much anticipated oral arguments on the Microsoft v. i4i case. This case is being hailed as one of the most important patent cases to reach the Supreme Court in the last 10 years as it has the potential to change long standing precedent in patent law. The Supreme Court is being asked to determine how much proof must be provided when an accused infringer alleges that a patent is invalid.  As the law stands now, in order to invalidate a patent, a defendant must prove that the patent is invalid by “clear and convincing evidence.”  Microsoft is now asking the Court to lower the burden of proof for an invalidity defense to a preponderance of the evidence standard.

To date, 20 amicus briefs were submitted to the Supreme Court on behalf of Microsoft and as of last Friday, 22 amicus briefs were filed on behalf of i4i (including one filed by the U.S. solicitor general).  As you can imagine, the patent community has been furiously writing about the numerous amici briefs that have been filed on behalf of both parties.  Here’s a sample of what the patent world is saying about this potentially landmark case……..

1.  US government sides against Microsoft in Supreme Court patent case (Computerworld)

2.  BIO’s Amicus Brief: Microsoft v. i4i (Patently BIOtech) Read the rest of this entry »

What Happens After A Case Is Stayed Pending Patent Reexamination?

Scott A. McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing what happens to a district court/ITC litigation when the Court stays the ongoing case pending the outcome of a parallel reexamination.  According to the article, a large percentage of these cases end favorably for the defendants.  McKeown examines whether or not this reality will ultimately result in increased reexamination filings.

42% of 2007 Cases Remain Stayed

Patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court’s will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial economy.

But, what happens to these cases? Are they ultimately dismissed altogether? Do the majority of these cases resume? Do the answers to these questions vary based upon the type of patent reexamination request? Read the rest of this entry »

Selecting Forum And Venue For Your Patent Litigation

Trevor Carter, Partner at Baker & Daniels and Practice Center Contributor, and Dorothy R. Auth, Ph.D., Partner at Cadwalader, Wickersham & Taft, sent in this article reviewing the legal homework of determining jurisdiction and proper venue, and discussing considerations parties must make to select the proper forum and how to keep their patent case there through resolution.  Trevor Carter will be speaking at PLI’s 5th Annual Patent Law Institute in San Francisco on Monday, March 21st.  Here is an excerpt from the article….

Venue

Chapter 87 of the Judicial Code addresses venue for various types of civil actions.  There are general venue provisions[1] and special venue provisions.

Venue Statutes – Patent cases: 28 U.S.C. § 1400(b)

Venue for patent infringement cases and copyright cases is addressed under a special venue statute, 28 U.S.C. §1400.  In particular, the venue statute for patent cases is §1400(b), which reads:

Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.  § 1400(b). Read the rest of this entry »

Federal Circuit Adopts Heightened Pleading Standard in False Marking Cases

It’s likely that there were many patentees doing  a victory dance yesterday when the Federal Circuit  imposed a stricter pleading requirement in false marking cases.  In the In re BP Lubricants USA decision, the Court held that plaintiff’s must now plead with particularity the specific facts underlying the false marking allegations.  Foley & Lardner Partner and Practice Center Contributor Jeanne Gills sent in this alert which discusses the decision and what effect it may have on both pending and future false marking cases.

On March 15, 2011, the Federal Circuit held that “Rule 9(b)’s particularity requirement applies to false marking claims and that a complaint alleging false marking is insufficient when it only asserts conclusory allegations that a defendant is a ‘sophisticated company’ and ‘knew or should have known’ that the patent expired.” In re BP Lubricants USA Inc., No. 2010-M960, at *1 (Fed. Cir. Mar. 15, 2011). In granting BP Lubricants’ mandamus petition (in part), the Court agreed that this case “warrant[ed] the extraordinary remedy of mandamus” since the Court had not previously decided “whether Rule 9(b) applied” or “discussed the requisite level of pleading required.” Id. at *11. The Court directed the district court to dismiss the relator’s complaint with leave to amend in accordance with 9(b)’s pleading requirements. Id. This decision may lead to the dismissal of similarly pled complaints filed by other qui tam plaintiffs. Read the rest of this entry »

Patent Drafting: Defining Computer Implemented Processes

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

The United States Patent and Trademark Office is radically updating the Patent Bar Examination starting in April 2011.  Since I teach the PLI Patent Bar Review Course that has required John White and I to revise our materials.  One of the new things tested will be the recently released 112 Guidelines, which are full of great information and explanation, particularly relating to computer implemented processes; what many would call software.  Being the “software guy” one of my responsibilities has been to work on the 112 Guidelines and the Bilski Guidelines for the PLI course.  So I thought I would take this opportunity to write, once again, about how to disclose computer implemented inventions to satisfy the disclosure requirements, which are embodied specifically in 35 U.S.C. § 112.

The statutory requirements for computer-implemented inventions are the same as for all inventions.  That means that in order to be patentable the invention must meet the patent eligibility test in 35 U.S.C. § 101, the invention must be new (§ 102), it must be non-obvious (§ 103) and it must be adequately described (§ 112).  Since the United States Supreme Court announced its decision in Bilski v. Kappos, the United States Patent and Trademark Office has continually urged patent examiners to get beyond the § 101 inquiry except in extreme cases.  Prior to the Supreme Court’s Bilski decision many examiners would simply see a computer-implemented method and issue a blanket and rather non-specific rejection asserting that the invention was not patent eligible subject matter under § 101.  The USPTO focus on getting past § 101 and to the meat of the invention means that such rejections are no longer the norm.  It also means that the Patent Office is pushing the real question about whether an patentable invention is presented into the adequate description space pursuant to § 112.  Thus, a thorough and complete description is absolutely essential when your invention relates to a computer-implemented method, whether it is software, an Internet processes or a business method. Read the rest of this entry »