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May. 31, 2011 - Global-Tech Appliances, Inc. v. SEB S.A - CPLRG™ 0067

Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) (ALITO, Roberts, Scalia, Thomas, Ginsburg, Breyer, Sotomayor, Kagan) GlobalTech.05312011.ussc

MAJOR ISSUES: active inducement of infringement; Section 271(b); knowledge of patent; willful blindness as knowledge

COMMENTS: Section 271(b) imposes liability on those who actively induce infringement. The statute and its sister provision on contributory infringement, Section 271(c), impose liability for “indirect” infringement, that is, for acts of causing another to commit direct infringement by unauthorized making, selling, etc. As has long been recognized, the two statutes are ambiguous on what level of knowledge and intent an accused indirect infringer must have.

In Global Tech, the Supreme Court confirms that (1) there is a requirement that an indirect infringer have knowledge of the patent in question, (2) the knowledge requirement may be met by a showing of “willful blindness, but (3) the Federal Circuit erred by adopting a standard of “deliberate indifference to a known risk.

As discussed below, in Global-Tech, the Supreme Court did not address the difficult questions that arise when an accused inducer clearly knows of a patent, knows of the patent owner’s accusation of infringement, but believes that there is no infringement. For example, the accused inducer may rely on an opinion of counsel that the patent’s claims are invalid or that the infringement accusation is based on an unsupportably broad interpretation of the claims. As of June 2011, Federal Circuit and district court decisions do impose an “intent” requirement and have upheld findings of no liability when an accused inducer believed in good faith that there was no infringement. The issue may be reevaluated by the courts in the future.

CROSS REFERENCES: On active inducement, see Chisum on Patents § 17.04. For case law, see Chisum Patent Law Digest § 5115. Read CPLRG™ 0067

May. 25, 2011 - Therasense, Inc. v. Becton, Dickinson & Co. - CPLRG™ 0068

Therasense, Inc. v. Becton, Dickinson & Co., — F.3d —-, 2011 U.S. App. LEXIS 10590 (Fed. Cir. 2011) (en banc) (RADER, Newman, Lourie, Linn, Moore & Reyna; O’MALLEY, concurring-in-part & dissenting-in-part; BRYSON, Gajarsa, Dyk & Prost, dissenting) Therasense.05252011.fc

MAJOR ISSUES: inequitable conduct rendering patents unenforceable; raising standards for materiality and intent; “but for” materiality; no “sliding scale”; no materiality required for affirmative egregious misconduct

COMMENTS: In a milestone decision, the Federal Circuit, sitting en banc, reviewed the standard of materiality for the inequitable conduct defense to patent infringement. In a majority opinion for six of the participating eleven judges, Chief Judge Rader “tighten[ed] the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.”  On intent, the majority (1) rejected a “sliding scale” approach under which “a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa,” and (2) restricted the circumstances under which the necessary intent to deceive the PTO may be inferred.  On materiality, the majority (1) adopted a “but-for” standard of materiality, (2) recognized “an exception in cases of affirmative egregious misconduct,” and (3) eschewed prior decisions that relied on the PTO’s Rule 56 definitions of materiality.

For a preliminary, critical evaluation of Therasense, see below.

CROSS REFERENCES:  On the inequitable conduct defense and its history, see Chisum on Patents 19.03.  For case law on the defense, see Chisum, Patent Law Digest 4000.

Read CPLRG™ 0068

Dec. 17, 2010 - Prometheus Laboratories, Inc. v. Mayo Collaborative Services - CPLRG™ 0071

Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347 (Fed. Cir. 2010) (LOURIE, Rader & Bryson), on remand from 130 S. Ct. 3543 (2010), cert. granted, 180 L. Ed. 2d 844 (June 20, 2011). PrometheusLabMayo12172010.fc

MAJOR ISSUES: Section 101 patent eligible subject matter; Bilski; medical diagnostic claims

In 2009, before the Supreme Court’s Bilski decision on patent eligible subject matter and abstract ideas, see Bilski v. Kappos, 130 S. Ct. 3218, CPLRG 0015 (2010), the Federal Circuit held that medical diagnostic claims were to patent eligible subject matter. The Supreme Court remanded the case for reconsideration in light of Bilski.  The Federal Circuit reaffirmed its prior decision.  On June 20, 2011, the Supreme Court granted review, indicating the Supreme Court’s intent to address again issues on what constitutes patent eligible subject matter under Section 101, this time in regard to biomedical subject matter. Read CPLRG™ 0071

Dec. 8, 2010 - Research Corp. Technologies, Inc. v. Microsoft Corp - CPLRG™ 0072

Research Corp. Technologies, Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) (RADER, Newman & Plager) ResearchCorp12082010

In an early response to Bilski v. Kappos, 130 S. Ct. 3218, CPLRG 0015 (2010), the Federal Circuit, in an opinion by Chief Judge Rader, rebuffed a Section 101 challenge to claims in two patents to methods of “digital image halftoning.”  The court indicated a reluctance to find the kind of abstractness that the Supreme Court relied upon in Bilski to reject claims as ineligible subject matter under Section 101.  The court suggested that it would be more fruitful to apply specific standards of patentability, such as indefiniteness and lack of written description under 35 U.S.C. Section 112.

The struggle to make sense out of Bilski continued in subsequent Federal Circuit decisions.  See, e.g., Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347, CPLRG 0071 (Fed. Cir. 2010), on remand from 130 S. Ct. 3543 (2010), cert. granted, 180 L. Ed. 2d 844 (June 20, 2011); Ass’n for Molecular Pathology v. United States Patent and Trademark Office, CPLRG 0073 (Fed. Cir. July 29, 2011); Cybersource Corp. v. Retailed Decisions, Inc., CPLRG 0074 (Fed. Cir. Aug. 16, 2011). Read CPLRG™ 0072

Jun. 28, 2010 - Bilski v. Kappos - CPLRG™ 0015

Bilski v. Kappos, 130 S. Ct. 3218, CPLRG 0015 (2010) (KENNEDY, Roberts, Thomas, Alito & Scalia (except for Parts II-B-2 and II-C-2), STEVENS, Ginsburg, Breyer & Sotomayor, concurring; BREYER & Scalia (as to Part II), concurring)   

BilskiUSSCt06282010

MAJOR ISSUES: Business method patents; “process” in Section 101; exceptions for abstract ideas, natural phenomena, and laws of nature Read CPLRG™ 0015

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