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."

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.

Toshiba Corp. v. Imation Corp.

• 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." 

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).

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.