Tuesday, November 30, 2010

"Batman and Patents"

Another article where I can't decide if it's funny or serious -- an analysis of whether Batman is forfeiting patent protection on all those gadgets.  So I'll label this under BOTH "Patents" and "Humor."

Monday, November 29, 2010

R.I.P. Leslie Neilsen

Comic star Leslie Nielsen has passed away.  He died of complications from pneumonia.

Supreme Court Agrees to Decide Whether to Make it Easier to Invalidate Patents

A previous post discussed how Microsoft was asking the U.S. Supreme Court to make it easier to invalidate patents.  Today the Supreme Court granted certiorari in the case, Microsoft v. i4i (see page 4 of the order list).

Microsoft had asked the Court to review the Federal Circuit's standard of proof that a defendant trying to prove a patent invalid must do so by “clear and convincing” evidence.  Microsoft is arguing that a defendant need only prove invalidity by a preponderance of the evidence.  I was one of the authors of an amicus brief supporting Microsoft's cert petition, filed on behalf of the Electronic Frontier Foundation, Public Knowledge, the Computer & Communications Industry Association and the Apache Software Foundation.

If Microsoft is successful on the merits, this will make it easier to invalidate a patent than it is under existing law.  Details are in the previous post.  If the Supreme Court rules in Microsoft's favor, that will greatly change the landscape of patent enforcement and litigation, especially compared with the situation five years ago.  In a 2006 case, eBay v. MercExchange, the Supreme Court reversed the Federal Circuit's rule that if a patent owner wins at trial, an injunction would almost always be granted.  The Federal Circuit's "automatic injunction" rule permitted non-practicing entities to obtain injunctions against companies that actually made a product.  A notable example was the "Blackberry" patent case, NTP v. Research in Motion, where a trial judge enjoined RIM's Blackberry wireless device.  (eBay was decided two months after the settlement of NTP v. RIM, too late to help RIM.)  In practice, a non-practicing entity would use the "automatic" injunction just to leverage a larger settlement after the trial -- or the NPE would simply use the threat of such an injunction to obtain better settlement terms before trial.

In a 2007 case, KSR v. Teleflex, the Court made it easier to invalidate a patent because the claimed invention was obvious.  The Federal Circuit had a rule that usually required a "teaching, suggestion, or motivation" in the prior art to find a patent obvious.  This rule also greatly favored patent owners, since it was often difficult for an accused infringer to find such a "teaching, suggestion, or motivation" to prove obviousness.  The Supreme Court reversed the Federal Circuit in that case, and adopted a flexible rule making it easier to prove obviousness.  (My analysis of KSR, posted on SCOTUSblog, is here.)

While KSR made it easier to prove a patent was obvious, the accused infringer still had to do so by clear and convincing evidence.  If Microsoft v. i4i allows proof of invalidity by just a preponderance of the evidence, it will be even easier to prove that a patent is obvious (and invalid on other grounds as well).  And with "automatic" injunctions eliminated by eBay, patent owners will have nowhere near the leverage in negotiations and in litigation that they had five years ago.

UPDATE: Patently-O's analysis is here.  EFF's web post is here.  (Techdirt quotes the EFF post.)  A posting at SCOTUSblog on today's cert grants is here.  Joe Mullin's post is here.

Wednesday, November 17, 2010

One-Question IQ Test

If you get this wrong, please follow the instructions at the bottom of the post.

Monday, November 15, 2010

Worthwhile Video About the "Combating Online Infringements and Counterfeits Act "

The lame duck Congress might try to pass something called the "Combating Online Infringements and Counterfeits Act."  I have not written about this act before, but it is a really bad idea. This video explains why.

Wednesday, November 10, 2010

SatireWire Is Back!

SatireWire was one of my favorite humor websites until it stopped running in 2002.  Good news, SatireWire is back!

Monday, November 8, 2010

Federal Circuit Makes It Easier to Challenge Patent Office Decisions

If a patent applicant's claims are rejected by the Examiner and that rejection is upheld by the Patent Office's Board of Patent Appeals and Interferences, the patent act gives the applicant two ways to seek judicial review.  One way is a direct appeal from the Board to the U.S. Court of Appeals for the Federal Circuit.  Most applicants choose this route since it's cheaper and a lot faster than the second way:  filing a civil action in the District of Columbia.  The outcome of that civil action can then be appealed to the Federal Circuit.

Gilbert Hyatt was unsatisfied with a Board decision rejecting some of his claims, and he chose to file a civil action.  The district court refused to let him present new evidence (despite being a trial court) because Hyatt could have presented his evidence to the PTO.  Hyatt appealed to the Federal Circuit.  A three-judge panel affirmed the district court by a 2-1 vote, but the entire CAFC decided to rehear the case en banc.

Today the en banc Federal Circuit reversed the district court.  The majority opinion, by Judge Moore, held that new evidence could be presented to the district court in a civil action, even if the evidence was previously available.  Judge Moore also held that the PTO's decision would be given deference as to evidence the PTO had in fact considered.

Judge Newman dissented in part.  She agreed that new evidence could be considered, but would have let the district court consider all the evidence anew, with no deference to the PTO.

Judge Dyk, joined by Judge Gajarsa, dissented.  In a lengthy dissent, these judges would have affirmed the district court and not permitted the new evidence.  (Judge Dyk was a member of the three-judge panel that initially affirmed the district court; Judge Moore was also a member of that panel but filed a dissenting opinion.)

UPDATE:  I had always assumed that new evidence could be asserted in a district court civil action.  If an applicant doesn't want to add new evidence, the logical way to appeal is a direct appeal to the Federal Circuit.  If new evidence were not allowed in district court actions, then there's little point to having those two different types of appeals in the patent act -- why bother with a district court action if the record is the same as it would be on a direct appeal to the Federal Circuit?  The 3-judge panel decision troubled me when it was decided, so today's decision makes sense to me.

Patently-O's analysis of the case is here

Monday, November 1, 2010

U.S. Justice Dept. Disagrees with U.S. Patent Office on Patentability of Isolated Genes

The U.S. Justice Department has filed an amicus brief in a Federal Circuit appeal involving the patentablity of isolated genes, arguing that the U.S. Patent Office's policy permitting patents on such genes is incorrect.  The case involved a number of patents asserted by Myriad Genetics, Inc. covering gene sequences related to breast cancer detection and associated testing methods.  The ACLU led a group of plaintiffs that sued to invalidate Myriad's patents as unpatentable subject matter under 35 U.S.C. §101.  The district court agreed that the patents were invalid, and Myriad appealed to the Federal Circuit.  

Although the PTO was a named defendant in the case, the Justice Dept. filed an amicus brief asserting that the district court was correct, at least as to isolated genes that occur naturally in nature.  Techdirt's analysis of the case states that there "must have been a hell of a political fight within the administration to get this through."  The Patently-O blog and SCOTUSblog also analyze the brief and contain links to it.