Tuesday, September 18, 2012

Declaratory Judgment Burdens

Medtronic v. Boston Scientific

  • "The substantive burden of proof normally does not shift simply because the party seeking relief is a counterclaiming defendant in a declaratory judgment action."
  • "[T]his court holds that in the limited circumstance when an infringement counterclaim by a patentee is foreclosed by the continued existence of a license, a licensee seeking a declaratory judgment of noninfringement and of no consequent liability under the license bears the burden of persuasion."

Tuesday, June 12, 2012

Contributory Infringement

35 U.S.C. § 271(c)

i4i v. Microsoft

  • "A party is liable for contributory infringement if that party sells, or offers to sell, a material or apparatus for use in practicing a patented process. That 'material or apparatus' must be a material part of the invention, have no substantial noninfringing uses, and be known (by the  party) to be especially made or especially adapted for use in an infringement of such patent.
  • To establish contributory infringement liability, the patent owner must show, among other things, that there are no substantial non-infringing uses.
  • “[N]on-infringing uses are substantial when they are not unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.”  Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009)
  • "In assessing whether a use is substantial, the fact-finder may consider the use’s frequency, . . . the use’s practicality, the invention’s intended purpose, and the intended market.”
  • "Recommending one use over another does not mean the non-recommended use is not substantial." 

Thursday, May 31, 2012

Inducement and Territoriality

In BASF Agro v. Cipla Limited, the Federal Circuit concluded that extraterritorial acts could form the basis of a finding of inducement of infringing acts in the U.S.

  • [Section] 271(b), which defines infringement by inducement, contains no such territorial proscription.
  • Section 271(b) therefore does not, on its face, foreclose liability for extraterritorial acts that actively induce an act of direct infringement that occurs within the United States, and Appellants cite no authority to that effect.  We therefore decline to read the statute as being so limited.
  • In short, where a foreign party, with the requisite knowledge and intent, employs extraterritorial means to actively induce acts of direct infringement that occur within the United States, such conduct is not categorically exempt from redress under § 271(b).

Wednesday, May 30, 2012

Hindsight, Problem to be Solved, Common Sense

In Mintz v. Dietz & Watson, Inc., the Federal Circuit vacated a district court's finding of obviousness and discussed some issues involving hindsight, using the invention to define the problem to be solved, and the notion of "common sense."

  • These objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight.
  • These objective criteria help inoculate the obviousness analysis against hindsight.
  • These objective criteria thus help turn back the clock and place the claims in the context that led to their invention.  Technical advance, like much of human endeavor, often occurs through incremental steps toward greater goals.  These marginal advances in retrospect may seem deceptively simple, particularly when retracing the path already blazed by the inventor.
  • Simply because the technology can be easily understood does not mean that it will satisfy the legal standard of obviousness.  In fact, objective consideration of simple technology is often the most difficult because, once the problem and solution appear together in the patent disclosure, the advance seems self-evident.  Instead, the proper analysis requires a form of amnesia that “forgets” the invention and analyzes the prior art and understanding of the problem at the date of invention.
  • The district court has used the invention to define the problem that the invention solves.  Often the inventive contribution lies in defining the problem in a new revelatory way.  In other words, when someone is presented with the identical problem and told to make the patented invention, it often becomes virtually certain that the artisan will succeed in making the invention.
  • The mere recitation of the words “common sense” without any support adds nothing to the obviousness equation.  Within the statutory test to determine if a claimed invention has advanced its technical art field enough to warrant an exclusive right, “common sense” is a shorthand label for knowledge so basic that it certainly lies within the skill set of an ordinary artisan.

Friday, December 2, 2011

Transfer of Venue


  • Writ of mandamus granted and district court ordered to transfer case.

  • "[T]he district court placed far too much weight on the plaintiff’s choice of forum.... When a plaintiff brings its charges in a venue that is not its home forum ... that choice of forum is entitled to less deference."

  • "Neither § 1404 nor [3rd Circuit case] list a party’s state of incorporation as a factor for a venue inquiry. It is certainly not a dispositive fact in the venue transfer analysis, as the district court in this case seemed to believe."

  • "While advances in technology may alter the weight given to these factors [the convenience of the witnesses and the location of the books and records], it is improper to ignore them entirely."

  • For similar cases, see In Re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); and In re TS Tech USA Corp., 551 .3d 1315, 1322 (Fed. Cir. 2008).

Thursday, December 1, 2011

Prior Invention Under 102(g)(2)


  • Prior invention under 102(g)(2) can be established by showing that the invention was first reduced to practice by another or that the invention was first conceived by another who then exercised reasonable diligence in reducing that invention to practice.

  • Dow, Mycogen Plant Sciences, and Invitrogen are consistent applications of the same rule. To establish prior invention, the party asserting it must prove that it appreciated what it had made. The prior inventor does not need to know everything about how or why its invention worked. Nor must it conceive of its invention using the same words as the patentee would later use to claim it.

Wednesday, October 12, 2011

Injunction/Irreparable Harm

  • We take this opportunity to put the question to rest and confirm that eBay jettisoned the presumption of irreparable harm as it applies to determining the appropriateness of injunctive relief. In so holding, we join at least two of our sister circuits that have reached the same conclusion as it relates to a similar presumption in copy-right infringement matters.

  • Although eBay abolishes our general rule that an in-junction normally will issue when a patent is found to have been valid and infringed, it does not swing the pendulum in the opposite direction. In other words, even though a successful patent infringement plaintiff can no longer rely on presumptions or other short-cuts to support a request for a permanent injunction, it does not follow that courts should entirely ignore the fundamental nature of patents as property rights granting the owner the right to exclude.

  • [W]ithout additional facts showing that the presence of additional competitors renders the infringer’s harm reparable, the absence of a two-supplier market does not weigh against a finding of irreparable harm.

  • Injuries that affect a “non-core” aspect of a patentee’s business are equally capable of being irreparable as ones that affect more significant operations.

  • A district court should assess whether a damage remedy is a meaningful one in light of the financial condition of the infringer before the alternative of money damages can be deemed adequate. While competitive harms theoretically can be offset by monetary payments in certain circumstances, the likely availability of those monetary payments helps define the circumstances in which this is so.
  • A party cannot escape an injunction simply because it is smaller than the patentee or because its primary product is an infringing one.

  • (Nexus between infringement and irreparable harm.) We hold that the district court was correct to require a showing of some causal nexus between infringement and the alleged harm to [the patentee] as part of the showing of irreparable harm. To show irreparable harm, it is necessary to show that the infringement caused harm in the first place. Sales lost to an infringing product cannot irreparably harm a patentee if consumers buy that product for reasons other than the patented feature. If the patented feature does not drive the demand for the product, sales would be lost even if the offending feature were absent from the accused product. Thus, a likelihood of irreparable harm cannot be shown if sales would be lost regardless of the infringing conduct.
  • (Nexus between infringement and irreparable harm.) While the evidence that [the accused infringer's] employees believed it to be important to incorporate the patented feature into [its] products is certainly relevant to the issue of nexus between the patent and market harm, it is not dispositive. That is because the relevant inquiry focuses on the objective reasons as to why the patentee lost sales, not on the infringer’s subjective beliefs as to why it gained them (or would be likely to gain them). 
  • (Delay in bringing suit and irreparable ham.) [I]t was reasonable for the district court to consider the issue of delay and to find that [the patentee] had not proceeded as quickly as it could have in seeking preliminary injunctive relief. The district court correctly noted that delay in bringing an infringement action and seeking a preliminary injunction are factors that could suggest that the patentee is not irreparably harmed by the infringement.