Patent Reform in Limbo with Supreme Court Ruling on Patent Fee Shifting

The United States Supreme Court recently issued two much-anticipated decisions on fee shifting in patent litigation. While any cases issued by the Supreme Court are important and relevant, these two decisions have the potential to significantly impact pending patent legislation in Congress. Fee shifting has been articulated as one of the chief driving forces for more patent legislation so quickly after the massive America Invents Act (AIA) changes.

The decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., was the primary decision because the Court explained that the ruling formed the basis of their decision in Highmark, Inc. v. Allcare Health Management System, Inc. In other words, the Supreme Court decided Octane Fitness and then applied that decision, together with the new law, to resolve Highmark.

In a nutshell, with Octane Fitness, the Supreme Court changed the law as previously announced by the Federal Circuit to make it easier for district courts to sanction plaintiffs for bringing meritless patent infringement suits, while Highmark makes it more difficult for the Federal Circuit to reverse district court decisions under the statute. Both cases were closely watched by both the private sector and Congress, which has been pursuing efforts to quash the perceived problem of patent cases filed by non-practicing entities.


Top 10 Issues for Patent Litigators in 2011

Written by Brandon Baum (Partner at Mayer Brown and Practice Center Contributor).

The end of the year is the time for top 10 lists.  Here, in no particular order, are my top 10 issues for patent litigators in 2011.

10.  Microsoft Corp v. i4i Ltd. Partnership., and the clear and convincing evidence standard where the defendant relies on uncited art.  Will the Supreme Court decide that a lesser burden of proof is required to show invalidity when art was never considered by the USPTO?  If so, this will profoundly change both litigation and prosecution practice.  My favorite possible implication – what presumption applies to a mongrel 103(a) combination of cited and uncited art?  And will the PTO experience a data dump of prior art, if Microsoft prevails?

9.  Global-Tech Appliances v. SEB S.A., and the standard for proving the mental state required for induced infringement.  Whatever language the Supreme Court uses to describe the mental state required to show inducement will send everyone scrambling to prove or disprove the existence of that mental state. (more…)