Archives for January 2014

Supreme Court Holds that Patentee Bears Burden of Persuasion on Infringement in a Patent License Declaratory Judgment Action

In a January 22, 2014 decision, the U.S. Supreme Court overturned the Federal Circuit and held that when a licensee seeks a declaratory judgment against a patentee that the licensee’s products do not infringe the licensed patent, the patentee bears the burden of persuasion on the issue of infringement.  Although it is well established that the burden of proving infringement generally lies with the patentee, the Federal Circuit had previously ruled that, in a patent license declaratory judgment action, a plaintiff licensee bears the burden of proving non-infringement.  In Medtronic, Inc. v. Mirowski Family Ventures, LLC, the Supreme Court ruled that shifting the burden to the licensee in a declaratory judgment action is not supported by case law and also creates unnecessary complexity by, among other things, requiring a licensee to prove a negative.  

For additional information, please see our linked Supreme Court Case Summary.

Federal Circuit Holds That Prosecution History Estoppel Applies To Design Patents

In a January 8, 2014 decision, the U.S. Court of Appeals for the Federal Circuit held that prosecution history estoppel applies to both utility and design patents.  Although the doctrine of prosecution history estoppel is well established for utility patents, in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC (Fed. Cir. 2014), the court first reviewed this doctrine in the context of design patents.  As justification for its holding, the court opined that prosecution history estoppel must also apply to design patents in order to serve the principles of public notice.  Thus, when subject matter is surrendered during prosecution of a design patent, prosecution history estoppel may prevent the patentee from “recapturing in an infringement action the very subject matter surrendered as a condition of receiving the patent.”  Estoppel applies not just to subject matter surrendered in light of the prior art, but to other grounds for patentability, including (as in the Malibu Boats case) restriction requirements.

For additional information, please see our linked Federal Circuit Case Summary.


Supreme Court to Hear Key Patent Cases

The Supreme Court recently granted certiorari in three patent cases, bringing its total number of pending patent-related cases to six. 

Alice Corporation Pty. Ltd. v. CLS Bank International

On May 10, 2013, a divided Federal Circuit issued a one-paragraph decision affirming the district court’s ruling that the claims of Alice’s patents are not directed to patent-eligible subject matter under 35 U.S.C. §101.  The patents at issue are directed to a computerized trading platform for conducting financial transactions.  There was no majority opinion supporting any portion of the decision.  Instead, different groups of the judges filed six separate opinions on the appropriate standard for determining the patent eligibility of computer-implemented inventions.

Alice’s petition broadly defines the question presented as: “Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.”  The case is set for oral argument on March 31, 2014.  More information about the Federal Circuit’s decision can be found in our May 24, 2013 Special Report.


Limelight Networks, Inc. v. Akamai Technologies, Inc.

On August 31, 2012, a divided (6-5) Federal Circuit issued an en banc decision adopting a new standard for induced infringement under 35 U.S.C. §271(b).  Under the new standard, all the steps of a patented method still must be performed by one or more entities.  However, when performance of the steps is divided among different entities, the group of entities does not need to act as a “single entity” as is previously required for direct infringement liability under 35 U.S.C. §271(a) (i.e., there is no need to show that the induced party is an agent of the inducer or is acting under the inducer’s direction or control).

The issue to be reviewed by the Supreme Court: “Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under Section 271(a).”  The date for oral argument has not yet been set.  More information about the Federal Circuit’s decision can be found in our September 14, 2012 Special Report.


Nautilus, Inc. v. Biosig Instruments, Inc.

On April 26, 2013, the Federal Circuit reversed the district court and held that Biosig’s patent was not insoluably ambiguous, because the patent’s “claim language, specification, and the figures . . . provide sufficient clarity to skilled artisans as to the bounds of [the] disputed term.”  In its petition for certiorari, Nautilus argues that the Federal Circuit’s tolerance for ambiguous patent claims has “invited patent drafters to obfuscate the invention” and “shifted the public-notice function from the patent claim to a court’s construction of the claim.” 

The questions presented by Nautilus: “Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming? Does the presumption of validity dilute the requirement of particular and distinct patent claiming?  The date for oral argument has not yet been set.