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. (more…)

Patent Reform Takes A Big Step Forward As The Senate Passes The America Invents Act

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, along with colleagues Courtenay C. Brinckerhoff and Liane M. Peterson, sent in this alert highlighting the key provisions of The America Invents Act.

On March 8, 2011, U.S. patent reform moved one step closer towards becoming a reality when the Senate passed the America Invents Act (S. 23) in a bipartisan, 95-5 vote. The bill includes some modification to the “first-to-file system” and removes the damages and venue provisions that were present in earlier versions of the bill.

Now the House of Representatives will have to craft its own version of patent reform, which is expected to have at least some differences vis-à-vis the Senate bill. If and when the House approves its patent reform bill, House and Senate leadership will have to reach a compromise. Although the House is expected to vote in support of a compromise bill, final passage could be blocked by a late-stage “hold” in the Senate. Thus, patent reform likely still has a long road ahead. (more…)

Hoffman & Baron: The Current State of Patent Law

During late 2009 – 2010, we saw a significant number of remarkable decisions from the Supreme Court and the Federal Circuit that impacted the patent community.  From Bilski v. Kappos, to Forest Group v. Bon Tool, to Wyeth v. Kappos, to Ariad Pharmaceuticals v. Eli Lilly, just to name a few.  The following article discussing these decisions was written by Robert Neuner, Partner with Hoffman & Baron and presenter at PLI’s upcoming 5th Annual Patent Law Institute.  Here is an excerpt and a link to the article.

This paper discusses a range of cases decided in late 2009 and 2010 that reflect the current state of the law on issues with which each of us should have at least some familiarity.  Having decided Bilski, the Supreme Court has one again exercised its oversight over the Federal Circuit.  It will review three Federal Circuit decisions concerning the Bayh-Dole Act and the proofs necessary to establish (a) inducement of infringement and (b) patent invalidity.  There is also the blockbuster Myriad case now wending its way to a decision by the Federal Circuit. (more…)

Foley & Lardner: Senate Introduces Patent Reform Act of 2011

On Tuesday, the Senate introduced the Patent Reform Act of 2011.  While the latest version is similar to previous patent reform bills, there are some significant changes made in the 2011 proposed legislation.  Our friends at Foley & Lardner sent in this alert discussing the new bill and how the House plans to address patent reform in 2011.

On January 25, 2011, Sens. Patrick Leahy (D-Vt.), Orrin Hatch (R-Utah), and Chuck Grassley (R-Iowa) introduced the latest bill on patent reform legislation—the Patent Reform Act of 2011.  According to Sen. Leahy, the new legislation is based on prior legislation introduced during the 109thCongress, as well as compromises reached in March 2010 (the Managers’ Amendment to S. 515). A January 20, 2011 press release on Sen. Leahy’s Web site states, “[p]romoting economic growth continues to be a top priority for both Democrats and Republicans, and patent reform is part of that effort.” When introducing the bill, Sen. Leahy explained that the new legislation is intended to accomplish three primary goals: (1) transition to a first-to-file system; (2) improve patent quality; and (3) provide more certainty in litigation. The Act also includes provisions to limit standing and damages in false patent marking actions. However, Sen. Leahy did not directly address how he intends to resolve key differences with the House that carry over from last year’s stalled bill (S. 515), which contains many of the same provisions as the new bill. Meanwhile, the House has announced a new hearing that it will conduct on the link between patent reform and job creation, suggesting that it intends to obtain more input before considering legislative changes. Several of the key provisions of the recently introduced Senate bill are discussed in more detail below. (more…)

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…)