Jump the Shark Patent Style: Supremes Take Kappos v. Hyatt

Gene Quinn, of IPWatchdog and Practice Center Contributor, sent in this article discussing why he believes the United States Supreme Court’s decision to accept cert. in Kappos v. Hyatt was undeniably a bad decision.

By accepting cert. in Kappos v. Hyatt the United States Supreme Court has clearly and undeniably jumped the shark in terms of patents.  This case, which raises issues of such little importance to the greater scheme of patent law, is hardly appropriate for Supreme Court consideration.  The Supreme Court is wasting its time hearing this case and denying the slot to a far more important matter, which is nearly unconscionable.

Each year the United States Supreme Court receives upwards of 7,000 petitions for a writ of certiorari, which is the petition one must file in order to ask the Court to take the case.  The United States Supreme Court typically hears about 100 cases (plus or minus).  One would suspect that the cases heard by the Supreme Court for full consideration and a written opinion would be of the utmost importance to the Republic.  Those cases where there is either a fundamental matter of law, an issue that impacts a great many people or a case of tremendous importance for the administration of justice.  Simply stated, Kappos v. Hyatt does not qualify on any level for Supreme Court consideration.  Taking this case is an extreme and utter waste of precious judicial resources.

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Therasense Decision “Tightens The Standards” For Proving Inequitable Conduct

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent in this article she wrote with colleague Courtenay C. Brinckerhoff, discussing yesterday’s much anticipated Therasense, Inc. v. Becton, Dickinson & Co. decision.

On May 25, 2011, in a split decision, the U.S. Court of Appeals for the Federal Circuit decided Therasense, Inc. et al. v. Becton, Dickinson & Co. et al, Case No. 08-1511 et al., which it heard en banc to address the law of inequitable conduct, and to consider in particular whether the materiality-intent balancing framework should be modified and, if so, how.  The court’s decision “tightens the standards” for proving inequitable conduct, holding that evidence of intent should be considered independently from materiality, and that materiality generally must be proven by a “but-for” test, except in cases of “egregious misconduct, such as the filing of an unmistakably false affidavit.”

The court issued three decisions: (1) the opinion of the court, filed by Chief Judge Rader and joined by Judges Newman, Lourie, Linn, Moore, and Reyna in full, and O’Malley in Part V; (2) an opinion by Judge O’Malley, concurring-in-part and dissenting-in-part; and (3) a dissenting opinion by Judge Bryson, joined by Judges Gajarsa, Dyk, and Prost. (more…)

Birch Stewart on the McKesson Tech v. Epic Systems Decision

Leonard R. Svensson, Partner at Birch Stewart Kolasch & Birch, sent in this post discussing the recent McKesson Technologis v. Epic Systems decision and how it may impact those in the medical diagnostic or treatment fields.

On April 12th the Federal Circuit issued another decision related to joint infringement situations. This should be another warning to those drafting method claims, particularly in the medical diagnostic or treatment fields. The decision perhaps also portends a future en banc review of the issue. This follows the pattern of several decisions discussed by my partner, Jerry Murphy (Practice Center Contributor), and I at PLI’s 5th Annual Patent Law Institute during our lecture on Federal Circuit decisions in 2010 in the life sciences field.  (Click on the link to view Mr. Svensson and Mr. Murphy’s presentation “All Things Chemical & Biotechnical At The PTO“).

In the April 12th case of McKesson Technologies v. Epic Systems, the patent owner McKesson tried to enforce a patent on a method of electronically communicating between health care providers and patients. Epic Systems developed software and licensed it to heath care providers who used the software to communicate with patients. But since the steps of the method claims were performed by a combination of the patients and the health care providers, the Federal Circuit agreed with the District Court’s finding on summary judgment of no infringement by Epic Systems. (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…)

Three References PLUS Predictable Variation Doom Utility Lighter Claims

Written by Brandon Baum , of baum legal and Practice Center Contributor.

Some have suggested that the Federal Circuit’s recent decision in Tokai Corp. v. Easton Enterprises, Inc., No. 2010-1057, -1116 (Fed. Cir. Jan 31, 2011), signals a raising of the bar to show nonobviousness post-KSR.  See, e.g., Quinn, KSR Fears Realized: CAFC Off the Obviousness Deep End; Patently-O, The Teeth of KSR: Obviousness on Summary Judgment.  This author disagrees.

The technology at issue in Tokai is straightforward: a child-safety mechanism for use on a “utility lighter,” the type of lighter used to light a barbecue or pilot light. The safety mechanism consists of a spring-loaded locking lever that must be unlocked with one finger while simultaneously depressing the trigger to light the flame with another.  Although two-finger safety mechanisms had been used in prior art cigarette lighters, they had never been used with a utility lighter prior to the patentee’s application. Nevertheless, the panel majority of Judges Lourie and Bryson upheld the district court’s determination on summary judgment that the patents-in-suit were obvious. (more…)