Patent Law Practice Center

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…)

Institute Live Blog: Reactions To Bilski

Next panel  – “What Hath Bilski v. Kappos: Fallout in the Courts and the USPTO”.  The panel includes, Gary Hoffman of Dickstein Shaprio, David M. Rosenblatt of Thomson Reuters and Associate Prof. Michael Risch of Villanova School of Law.

– Gary Hoffman began with a discussion on how the Courts have reacted to Bilski.  The Federal Circuit has cited Bilski 7 times: 2 cases with substantive post-Bilski analysis: Prometheus (Court held MOT test is relevant but not the only test) & Research Corp. Tech (Court focused on whether the subject matter fails s 101’s requirement that it not be “abstract”); 2 references to the recency of the decision, 1 citation to the Supreme Court’s instruction that formulaic rules should be avoided,  1 metnion in dissent (Intervet), 1 case (King Pharma) where s101 analysis was passed over because the Fed Circ had already found the claims anticipated. (more…)

US Supreme Court Accepts Microsoft Appeal in i4i Case

The following was sent in by Gene Quinn, of IPWatchdog and Practice Center Contributor.

Yesterday, the United States Supreme Court granted certiorari in Microsoft Corporation v. i4i Limited Partnership, with Chief Justice John Roberts taking no part in the decision or petition. The Supreme Court did not request the views of the Solicitor General, choosing rather to accept the matter with no input from the United States government.  The decision to grant cert. comes only days after the United States Patent and Trademark Office refused to grant reexamination of the patent in question.

Microsoft had filed an ex parte reexamination request on the patent in question, US Patent No. 5,787,449. The ‘449 patent exited reexamination unchanged. Microsoft then filed a second ex parte reexamination request, and it is this second request that was denied by the Patent Office on Wednesday, November 24, 2010. The denial of this second request means that the Patent Office did not believe there to be a substantial new question of patentability. (more…)

He Who Pays the Piper Calls the Tune. Or Does He? The Supreme Court to Decide Who Owns Patent Rights to Inventions Produced in Federally Funded Projects?

The following alert was written by our friends at Kilpatrick Stockton, Charles W. Calkins and Wendy A. Choi.

The Supreme Court granted certiorari on November 1, 2010, in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. (09-1159), involving the ownership of inventions made with federal funding under the 1980 Bayh-Dole Act. The issue is whether a federal contractor university’s statutory right under the Bayh-Dole Act in inventions arising from federally funded research can be terminated (or superceded)unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights in a future invention to a third party.

The three patents in this case involve methods for using PCR techniques to measure HIV concentration in blood plasma to determine the effectiveness of AIDS treatment. Stanford scientists invented the methods while subject to a contractual duty to assign any inventions to Stanford. After agreeing to assign rights, but prior to making the invention, one of the inventors, Dr. Mark Holodniy, who was working on a collaboration between the university and Cetus, assigned his rights in his future inventions to Cetus, whose PCR business was later acquired by Roche. Dr. Holodniy promised to assignrights to Stanford but had actually assigned his rights to Cetus. Stanford filed for a patent and then demanded a royalty from Roche for the sale of its HIV test. The Federal Circuit has held that Roche could not be liable for infringement because it held ownership rights based on Dr. Holodniy’s purported assignment, which was contrary to his promise to Stanford. (more…)

Amici Argue For Supreme Court Review Of The Indefiniteness Test

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor)

Last Thursday, Mark Lemley and I filed an amicus brief urging the Court to take certiorari in Applera v Enzo Biochem for the purpose of reviewing the test for when a claim is indefinite under 35 USC 112, Para. 2.   The brief (which is available here) was signed by an array of innovative companies.

The Patent Act requires claims to be “distinct” and “particular” in terms of calling out the subject matter of the claimed invention.  The purpose of this requirement is – not surprisingly – to put the public on notice of what the claims do and do not cover.   See Hearing Components, Inc v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010) (“the purpose of the definiteness requirement is to ensure that ‘the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the scope of the patentee’s right to exclude.”).

In other words, the Patent Act requires claims to be definite precisely so that people reading the patent know what rights have been claimed by the patent owner and what rights are still available.  Permutit Co. v. Graver Co., 284 U.S. 52, 60 (1931) (“[t]he statute requires the patentee … to inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.” ) (more…)