Patent Law Practice Center

Bilski v. Kappos: Summary And Implications

Written by Andrea M. Augustine (Partner at Foley & Lardner LLP and faculty member for the upcoming PLI Patent Litigation program) and Kevin J. Malaney (Associate at Foley & Lardner LLP)

On June 28, 2010, the U.S. Supreme Court issued its much anticipated opinion in Bilski v. Kappos.  In Bilski, the Court affirmed the judgment of the Court of Appeals for the Federal Circuit, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), that the claims in question did not qualify for patent protection.  In doing so, the Court unanimously rejected the Federal Circuit’s determination that the “machine-or-transformation” test was the exclusive test for “process” patent eligibility.  But instead of establishing what test should be applied in future cases, the Court left this question open and simply relied on previous Supreme Court case law and the Patent Act to hold Applicants’ claims ineligible for patent protection.  Despite the uncertainty regarding the appropriate test, Bilski does provides some guidance as to what “process” claims are eligible for patent protection.  Because of the open questions that remain, future cases will be closely watched and studied for clarification and application of the Court’s holdings.  In the meantime, observers, advocates, and pundits will review the fine details and history of In re Bilski in search of guidance on the future of business method patents and patent applications. Read the rest of this entry »

Delaware District Court Protective Order Practice

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

The Federal District Court of Delaware seems to have a different idea when it comes to patent reexamination concurrent with litigation.   In my article, Protective Orders: Patent Reexamination & Concurrent Litigation in Delaware, I explain that protective order issues can be quite contentious in litigation between direct competitors. In many district courts, the simple solution to this issue is to forbid trial counsel from participating in an ongoing patent reexamination. The concept is simple, since claims are being amended or added in reexamination, confidential product data of competitors can unfairly steer the claim drafting process, providing significant leverage to the Patentee.

In Delaware, the protective order issue has been viewed differently.

Last week, this trend continued in the case of Xerox Corp. v. Google, Inc. et al. In Xerox, the court once again cited the same familiar local decisions on the issue, all of which appear grounded on arguably flawed perceptions of patent reexamination. Read the rest of this entry »

Reexamination Requests Filed the Week of September 13th

Here is this week’s  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor….

Perhaps the most important reexamination request last week was filed by Google against a Xerox patent (Ex parte No. 6).  The patent is the subject of a pending law suit in Delaware between the parties.  Earlier this month, Magistrate Judge Mary Pat Thynge issued a decision in that case allowing Google to use counsel from its litigation team for any reexamination – essentially, she concluded that the potential harm to Google of limiting its choice of reexamination counsel outweighed the risk of improper use by Google’s reexamination counsel of Xerox’s protective order information.

Another interesting request was filed against an Amylin patent (Ex parte No. 13) for exendins which are peptide hormones that regulate blood glucose levels.  A reexamination (95/000,276) has been pending since 2007 against similar Amylin extendins patent – the ‘276 reexamination is noteworthy in that it features that rare creature: the reexamination continuation.  The earlier Amylin reexamination was filed by competitor ConjuChem.  Read the rest of this entry »

TiVo vs. Dish at the Federal Circuit: Examining TiVo’s Brief

Written by Gene Quinn ( of IPWatchdog and Practice Center Contributor)

Several weeks ago TiVo filed its brief in the matter of Tivo, Inc. v. EchoStar Corp., which will be hearden banc by the United States Court of Appeals for the Federal Circuit on Tuesday, November 9, 2010. The dispute between TiVo and EchoStar dates back to 2004 when TiVo sued EchoStar in the United States District Court for the Eastern District of Texas, alleging that its receivers infringe “hardware” claims (claims 1 and 32) and “software” claims (claims 31 and 61) of US Patent No. 6,233,389. The jury found there was willful infringement and the district court entered an injunction ordering EchoStar to cease infringing. It is this injunction that now is at the root of the dispute to be heard by the Federal Circuit. TiVo did not believe EchoStar lived up to the Order of the district court. The district court, seemingly out of an abundance of caution, decided not to utilize its summary contempt powers but held a year long proceeding to determine if infringement was ongoing. The district court found EchoStar was violating the injunction Order and acted accordingly. EchoStar appealed and argued that only a full patent infringement trial would suffice. The panel sided with TiVo over a strong dissent by Judge Rader, now Chief Judge of the Federal Circuit, who felt the summary proceedings were inadequate. For more see Looking Ahead to TiVo v. Dish at the Federal Circuit. So as the full Federal Circuit hears this case it is anticipated that the inherent powers of a district court to enforce their own Orders and administer justice will be front and center.

On September 10, 2010, TiVo, by and through their attorneys at Wilmer Cutler Pickering Hale & Dorr, filed their Brief for Rehearing En Banc with the Federal Circuit. The opening paragraph of the Introduction sets an ominous tone: Read the rest of this entry »

Federal Circuit Reiterates Importance of Evidence of Direct Infringement

Brandon Baum, partner in Mayer Brown and Practice Center Contributor, passed along this analysis on the Federal Circuit decision Fujitsu Ltd. v. Netgear Inc.

The Federal Circuit has reiterated the importance of patent plaintiffs providing proof of direct infringement by end-users to establish indirect infringement by equipment suppliers.  In Fujitsu Ltd. v. Netgear Inc., the patents-in-suit allegedly covered an aspect of the wireless communication protocols promulgated by the IEEE and Wi-Fi Alliance for IEEE 802.11 networking (“802.11 Standard”).  Plaintiffs Fujitsu, LG Electronics and U.S. Philips Corporation each held patents “essential” to the 802.11 Standard, which they licensed through a patent pool.  Philips’ patent purported to cover the 802.11 Standard’s message “fragmentation” protocol. 

Plaintiffs sued Netgear, alleging that its 802.11 Standard-compliant products indirectly infringed the patents-in-suit.  Pertinent to this article, Philips accused 260 Netgear products of implementing the patented fragmentation protocol, and therefore contributing to and inducing direct infringement by end-users of those products.  Read the rest of this entry »