LexisNexis® Legal Newsroom
Foley & Lardner LLP: The Supreme Court Argument in Microsoft v. i4i: Will the Court Lower the Burden for Proving Patent Invalidity in Infringement Litigation?

By Steven J. Rizzi , Jacqueline Wright Bonilla , Ariel M. Fox and Jeanne M. Gills 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...

Federal Circuit Allows Additional Claim on Patent Reissue as Hedge against Original Claim’s Possible Invalidity; Looks to Long-Standing Precedent in Reversing PTO/Board of Patent Appeals

The narrow rule relating to the addition of dependent claims as a hedge against possible patent invalidity is a reasonable and long-standing interpretation of the reissue statute, according to last week's Federal Circuit decision. Yasuhito Tanaka was issued U.S. Patent No. 6,093,991 , which...

Sutherland Legal Alert: New Dependent Claims in Reissue Are Permissible Under In re Yasuhito Tanaka

By Bill Warren and Louise Rains The ruling of the U.S. Court of Appeals for the Federal Circuit in In re Yasuhito Tanaka [ enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law ] has left no doubt that the patent reissue procedure can be used...

Supreme Court Rules against Microsoft in Patent Case

WASHINGTON, D.C. - (Mealey's) Endorsing a "clear and convincing" standard for proving patent invalidity, the U.S. Supreme Court on June 9 sided with a patent holding firm in its longstanding dispute with defendant Microsoft Corp. ( Microsoft Corp. v. i4i Limited Partnership et al. , No...

Patents Post-Grant: i4i Defeats Microsoft Challenge to Clear & Convincing Standard

Today, the Supreme Court issued a unanimous decision in the closely watched case of Microsoft v. i4i . As discussed at length previously , Microsoft sought Supreme Court review of the following issue: Whether the court of appeals erred in holding that Microsoft's invalidity defense (which rested...

Duane Morris LLP: Supreme Court Affirms Heightened Burden of Proof to Invalidate Patents

Emphasizes Value of Evidence Presented to USPTO During Patent Prosecution By Lewis F. Gould, Jr. , L. Norwood "Woody" Jameson , Robert H. Dietrick , and Christopher J. Tyson In a unanimous decision issued on June 9, 2011, the U.S. Supreme Court affirmed the Federal Circuit's holding...

Foley & Lardner: Supreme Court Unanimously Reaffirms Clear and Convincing Evidence Standard for Patent Invalidity

By Steven J. Rizzi , Courtenay C. Brinckerhoff , and Jeanne M. Gills In its decision in Microsoft Corp. v. i4i Limited Partnership , No. 10-290 (June 9, 2011), the U.S. Supreme Court unanimously affirmed the Federal Circuit's long-established precedent that in all patent infringement cases,...

Brinks Hofer Gilson & Lione: Supreme Court Holds Defense of Patent Invalidity Must be Proven by Clear and Convincing Evidence under Section 282 of the Patent Act

On June 9, 2011, the Supreme Court of the United States, on appeal from the United States Court of Appeals for the Federal Circuit, issued its decision in Microsoft Corp. v. i4i Limited Partnership , No. 10-290 [ enhanced version available to lexis.com subscribers / unenhanced version available from...

The Supreme Court's Holding that a Clear and Convincing Standard of Proof Must be Met to Show Patent Invalidity, Microsoft Corp. v. i4i L.P., 2011 U.S. LEXIS 4376 (Jun. 6, 2011)

In Microsoft Corp. v. i4i L.P., the Supreme Court held that one who challenges the validity of a patent must satisfy the factual predicate for a holding that the patent is invalid with clear and convincing evidence, even where the Patent and Trademark Office did not consider the evidence that the challenger...

Supreme Court Rules on Induced Infringement Standard and Upholds Clear and Convincing Evidence Standard for Invalidity

By Justin E. Gray ( jegray@foley.com ) The U.S. Supreme Court resolved two important patent law issues that were before it this term. On May 31, 2011, the Court issued its decision in Global-Tech Appliances, Inc. v. SEB S.A. , U.S., 10-6, -- U.S. - (2011); 179 L.Ed.2d 1167 (US 2011); 2011 US LEXIS...

Patents Post-Grant: CAFC Sends NTP Patent Reexaminations Back to USPTO

BPAI Definition of Email Found Unreasonable by CAFC Last February NTP appealed the invalidity findings of the USPTO to the Court of Appeals for the Federal Circuit (CAFC). At that time I predicted that the case would shift back to the USPTO on a disputed claim construction issue . Today, the...

Troutman Sanders LLP: Proving Invalidity Based on Prior Invention Under 35 U.S.C. 102(g)(2)

By Dabney Carr Successful patent invalidity challenges asserting prior invention under § 102(g)(2) are rare, which makes Judge Smith's recent award of summary judgment on that basis even more noteworthy. In her latest opinion in The Fox Group, Inc. v. Cree, Inc. , Case No. 2:10CV314,...

Patents Post-Grant: Limited Patent Reexamination Choices for Late Stage Litigants

Inter Partes Patent Reexamination is Not Always the Best Choice In the case of Inventio AG v. Otis Elevator Co. (SDNY) [ enhanced version available to lexis.com subscribers ] , the Court found that entry of a permanent injunction was against public interest where a pending ex parte patent reexamination...

Fitch, Even, Tabin & Flannery: Federal Circuit Holds That Federal Agencies Are Not Immune from Suit for Non-Monetary Patent Claims

By Eric L. Broxterman On August 24, 2011, the Federal Circuit decided that under the Administrative Procedure Act (APA), federal agencies can be sued for a declaration of patent invalidity and for other non-monetary relief. The case, Delano Farms Company v. California Table Grape Commission...

Patents Post-Grant: Microsoft’s Failure in Second Reexamination Attempt of I4I Patent Final

USPTO Denies Petition for Further Review The epic battle between Microsoft and i4i effectively ended with the Supreme Court ruling upholding the clear and convincing standard . Yet, some lingering arguments at the USPTO were only recently finalized relative to i4i's U.S. Patent 5,787,449 . ...

Patents Post-Grant: Ongoing Patent Reexamination Aids Summary Judgment on Invalidity

Court Cites ACP as Supportive of Summary Judgment of Invalidity Generally, when reexamination evidence is used to support contentions of patent claim invalidity, the accused infringers do not simply attempt to equate the grant of a request for reexamination with patent claim invalidity. Instead, the...

Fitch, Even, Tabin & Flannery LLP: Saint-Gobain—Standard of Proof Under the Doctrine of Equivalents

By Allen E. Hoover On May 29, 2012, the U.S. Supreme Court denied a petition for certiorari filed by Saint-Gobain Ceramics and Plastics, Inc., in Saint-Gobain Ceramics & Plastics, Inc. v. Siemens Medical Solutions USA, Inc. The Court's action is consistent with the concept in certain of its...

Duane Morris LLP: Second Circuit Says License Agreement No-Challenge Clauses Are Unenforceable When Entered into before Litigation

On July 10, 2012, the United States Court of Appeals for the Second Circuit held in Rates Technology Inc. v. Speakeasy, Inc. that covenants prohibiting challenges to a patent's validity, along with liquidated damages provisions, are unenforceable where the covenants were entered into prior to litigation...

Sheppard Mullin Richter & Hampton LLPS: Patents Issued in Error Are Presumed Valid, but Evidence Weighs Heavily against Them

By Bill Blonigan and Eric Gill Sciele Pharma. Inc. v. Lupin Ltd. (Fed. Cir. July 2, 2012) Patents are presumptively valid under 35 U.S.C. § 282 and can be proven invalid only by clear and convincing evidence. Thus, accused infringers hoping to prove a patent invalid must do so by satisfying...

Patents Post-Grant: Section 101 as a Basis for a Post Grant Patent Challenge

USPTO Clarifies Stance on 101 Challenges Before the PTAB Over the past few weeks, commentators have been buzzing about the ability/inability to challenge a patent on the grounds that the claims are not directed to statutory subject matter ( 35 U.S.C. § 101 ). Under the discussed theories, a 101...

Supreme Court Hears Dispute Over Patent Indefiniteness Standard

WASHINGTON, D.C. — (Mealeys’) A patent claim is not rendered indefinite simply because it requires interpretation between two or more competing readings, a government attorney told the U.S. Supreme Court on April 28 ( Nautilus Inc. v. Biosig Instruments Inc. , No. 13-369, U.S. Sup.; See 1...

Petitioner Over-Reaching at the PTAB Results in Adverse Summary Judgment

Stretching Prior Art Grounds Fatal to Petitioners In district court, 102 grounds are highly preferred to even the strongest 103 ground. This is because of the uphill battle in demonstrating invalidity in a forum that not only applies a presumption of patent validity, but also requires clear and convincing...

Supreme Court Hears Dispute Over Good Faith Belief of Patent Invalidity

WASHINGTON, D.C. — (Mealey’s) When facing allegations of induced patent infringement, a good faith belief that the asserted patent is invalid is an available and appropriate defense, an attorney told the U.S. Supreme Court today ( Commil USA LLC v. Cisco Systems Inc. , No. 13-896, U.S. Sup...

Divided Supreme Court: Belief of Patent Invalidity No Defense to Infringement

WASHINGTON, D.C. — (Mealey’s) In a 6-2 ruling, with Justice Stephen G. Breyer recused, the U.S. Supreme Court today rejected claims by Cisco Systems Inc. that having a good faith belief that a patent is invalid can serve as a defense to claims of induced patent infringement ( Commil USA LLC...

Good-Faith Belief in Patent Invalidity Does Not Negate Induced Infringement

On Tuesday morning the U.S. Supreme Court issued its opinion in Commil USA, LLC v. Cisco Systems, Inc . Reversing a 2013 decision of the Court of Appeals for the Federal Circuit, the Court today held that a defendant’s good-faith belief regarding the invalidity of an asserted patent is not a defense...