Patent Law Practice Center

Monsanto Looking Good After SCOTUS Oral Argument

By: Gene Quinn (IPWatchdog.com)

Last week, the United States Supreme Court heard oral arguments in the matter of Bowman v. Monsanto. For a recitation of the facts and procedural history, see Argument Summary. For purposes of this article suffice it to say that the case is about a farmer who did not want to buy Monsanto’s patented seed. He acquired seed from a grain elevator knowing that at least some would be Monsanto patented seed. He planted all the seed and applied Roundup® to kill everything but the Monsanto crop. He then harvested the progeny seeds for future use.

(more…)

Microsoft v. i4i – The Supreme Court Keeps the Clear and Convincing Standard

In the Microsoft Corp. v. i4i, the Supreme Court had to determine whether the burden of proof for parties alleging patent invalidity should be changed from a clear and convincing standard to a preponderance of the evidence standard.  Yesterday, the Court unanimously decided no!!  Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP, sent in this article discussing  the decision and possible ramifications.

Yesterday in Microsoft v. i4i __ U.S. __ (2011)(Sotomayor, J.), opinion below, i4i Ltd. v. Microsoft Corp., 589 F.3d 1246 (Fed. Cir. 2009)(Prost, J.), the Supreme Court gave a unanimous decision affirming the Federal Circuit’s interpretation of 35 U.S.C. §282 requiring clear and convincing evidence for an invalidity defense.

The statute at issue was 35 U.S.C. §282 which states:

A patent shall be presumed valid…. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity. (more…)

Gene Quinn on the Supreme Court’s Stanford v. Roche Decision

Big news for the technology transfer world…. earlier today, the Supreme Court issued it’s decision in Stanford v. Roche. The issue in the case was, in the context of federally funded research, the ownership of the invention first arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with that right by assigning the invention to a third party.  Gene Quinn, of IPWatchdog and Practice Center Contributor, passed along this article summarizing the opinion and what lasting consequences, if any, it will have on the patent community.

This morning the United States Supreme Court issued its decision in Stanford v. Roche, a decision that has been much anticipated in the technology transfer world.  Technology transfer is the front line for the interfacing of University research and private sector commercialization, so it is no great wonder that this case captured the attention of academia and the private sector alike. At issue in the case was whether the Bayh-Dole Act automatically vested ownership of patent rights in Universities when the underlying research was federally funded.

It is not at all an exaggeration to say that Bayh-Dole is one of the most successful pieces of domestic legislation ever enacted into law. The Bayh-Dole Act, which was enacted on December 12, 1980, was revolutionary in its outside-the-box thinking, creating an entirely new way to conceptualize the innovation to marketplace cycle. It has lead to the creation of 7,000 new businesses based on the research conducted at U.S. Universities. Prior to the enactment of Bayh-Dole there was virtually no federally funded University technology licensed to the private sector, no new businesses and virtually no revolutionary University innovations making it to the public. Bayh-Dole set out to remedy this situation, and as a direct result of the passage of Bayh-Dole countless technologies have been commercialized, including many life saving cures and treatments for a variety of diseases and afflictions. In fact, the Economist in 2002 called Bayh-Dole the most inspired and successful legislation over the previous half-century. Nevertheless, the question remained, at least until this morning, whether ownership of patent rights immediately vested in the University as the result of federal funding.

Click here to read Gene Quinn’s full publication.

 

The Supreme Court Argument in Microsoft v. i4i: Will the Court Lower the Burden for Proving Patent Invalidity in Infringement Litigation?

The much anticipated oral arguments in Microsoft Corp. v. i4i Ltd. took place at the Supreme Court yesterday, April 18, 2011.  The question on all of our minds is whether the Supreme Court will change the burden of proof for parties alleging patent invalidity in infringement litigation from a clear and convincing standard to a preponderance of the evidence standard?   Did yesterday’s proceedings bring us one step closer to the answer?  Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent in this alert she wrote with her colleagues wherein they highlight the key points from the oral argument and provide some insight as to what the outcome of this important case may be.

For nearly three decades, the Court of Appeals for the Federal Circuit has required litigants defending a claim of patent infringement to prove invalidity by clear and convincing evidence. On April 18, 2011, the U.S. Supreme Court heard oral argument in Microsoft Corp. v. i4i Ltd. P’ship, No. 10-290, the first case to squarely address whether the presumption of validity codified in the 1952 Patent Act mandates a heightened burden of proof for defendants challenging validity in a patent infringement action, e.g., where the prior art was never considered by USPTO. Microsoft contends that the burden should be no greater than a preponderance of the evidence when the USPTO did not consider the most relevant prior art during patent examination. i4i is one of the most significant patent cases in years, and one of the most significant business cases of the Court’s term. Beyond reducing the burden on accused infringers to prove invalidity in patent litigation, a lowering of the standard of proof could widely impact the value of patents. (more…)