Last week the Supreme Court heard arguments in a duo of cases regarding attorney fees in patent cases, and the meaning of the Patent Act's Section 285 language that allows a "court in exceptional cases may award reasonable attorney fees to the prevailing party." The arguments were concluded before the two-hours allotted for argument, and the most exciting news from the Supreme Court was unrelated to attorney fees, notes SCOTUSblog.
Recently in Intellectual Property Law Category
Last time, the question was whether a declaratory judgment action, seeking a ruling of non-infringement, shifted the burden of proof to the party pursuing the ruling (the alleged patent infringer).
This time, the issue again involves a shifting burden of proof, though the issue is complicated by questions of prior art and obviousness.
Last December, the Federal Circuit held that, once an alleged infringer discloses prior art, the burden of proof shifts to the patent holder to demonstrate that the patent should not be deemed obvious on that basis. Now, a petition for rehearing is pending, with amicus briefs attached.
Litigation is a notorious time sucker, but a patent case dragging on for ten years? That's just too long according to the Federal Circuit, who not only vacated and remanded the Patent Trial and Appeal Board ("Board") decision, but urged a "speedy resolution."
Patent 6,554,446 History
Tivoli owns patent 6,554,446 ("'446"), relating to a reflective material "stair-step lighting apparatus" to "alert users to the location of step edges in darkened or low light environments." In 2004, Tivoli sued Tempo for patent infringement, and after an inter partes reexamination, and decision by an examiner, Tivoli appealed to the Board. On February 24, 2012, the Board handed down its decision.
The facts of this case are unremarkable. Medtronic licenses patents from Mirowski for some products. Mirowski noticed that Medtronic was about to release new products, which they claimed infringed upon their patents. They wanted more royalties. Medtronic decided not to wait to be sued and filed a declaratory judgment action, seeking to have a judge rule that the new products didn't implicate the patents at issue.
The trial court ruled in Medtronic's favor, holding that even though they brought the declaratory judgment suit, the burden of proof still fell upon the party alleging infringement. The Federal Circuit disgreed, and reversed, holding that the burden fell on the party that brought the lawsuit.
The Supreme Court, however, disagreed, and shifted the burden of proof back to the patent holder.
It's been a big week at the Federal Circuit Court of Appeals, with a decision in Motorola's patent war with Apple and a computer virus spreading via bogus court emails.
Ready for the roundup? It's Friday, so we'll make it quick:
The Supreme Court is back in action (or, as I like to say, back in full effect), and cases originating in the Federal Circuit are moving up the ranks with cert petitions being granted. But they all can't be winners, and some petitions are getting denied as well. Here's a quick look at some of the hot cases.
Organic Seed Growers and Trade Association, et al., v. Monsanto Company, et al.
The Organic Seed Growers and Trade Association ("OSGTA"), though noble in their efforts, don't know when enough is enough. They preemptively sued Monsanto to protect themselves from a potential patent infringement claim, in case their fields became contaminated with Monsanto's genetically modified seed. The district court found no case or controversy.
The Federal Circuit is in the unique position of hearing very specialized and specific types of cases. If you're an IP attorney, or work with veterans, then it's important to keep a close eye on the cases coming out of this circuit, and 2013 was a pretty interesting year for the Federal Circuit.
Federal Circuit in the News
The infamous government bailout of 2008 still haunts us as the issue of whether Ben Bernanke could be deposed, while still in his position, was raised in a lawsuit from Maurice Greenberg, owner of Starr International, Co., a 12% stake holder in AIG. The last word by the Federal Circuit was that Bernanke may not be deposed while he is Chairman, but considering he steps down in less than a month, we're guessing this is not the last we'll hear on this issue.
The Federal Circuit also made history in September when Judge Hughes was confirmed as the first openly gay judge to sit on a Court of Appeals.
It's an issue that frustrates all three constitutionally recognized branches of government. The president has called for patent troll reform. Congress is considering it.
And so is the all-important judiciary, as the Federal Circuit continues to consider fee-shifting cases while waiting for the Supreme Court to step in, possibly saving themselves from their own arguably ill-advised precedent set in 2005.
Today's case? A memory maker sued a fellow Silicon Valley company, despite knowing that there was no literal infringement and that a "doctrine of equivalents" theory was tenuous, at best.
The Federal Circuit today reminded us all that judges are not clairvoyant, and if a party wants to make an assertion, it must back it up with actual facts and not "conclusory and generalized sentences."
In a quick and easy opinion (that is, for a patent case), the Federal Circuit affirmed the findings of the administrative law judge, and the International Trade Commission, and held that Motorola violated the Tariff Act of 1930 by importing goods that violated a Microsoft patent.
Last week the Supreme Court granted certiorari in a patent case that will have wide-reaching ramifications across the nation, across industries. The case, Alice Corporation Pty. Ltd. v. CLS Bank International, deals with a very basic issue: is computer software patent-eligible under the Patent Act?
Section 101 of the Patent Act allows for the patent eligibility of "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The question then becomes, is computer software a "new and useful process?" Companies like Facebook, JPMorgan and Google think that patent-eligibility for computer software is "too lax," while Microsoft and Oracle think "limiting protection for genuine innovation could hurt the nation's economy," according to Bloomberg.