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The United States Supreme Court affirmed the use of the clear and convincing evidence standard for challenges to the validity of patents last week in a closely watched and eagerly anticipated case, i4i v. Microsoft. The Supreme Court’s opinion re-affirmed decades of case law that the standard to challenge the validity of a patent is clear and convincing evidence rather than the preponderance of the evidence standard urged by Microsoft.

The patent held by i4i claimed an improved method for editing computer documents. The patent was asserted against Microsoft Word and Microsoft countered that the patents were invalid and challenged the standard for determining the validity of a patent, arguing that it should be by a preponderance of the evidence rather than the existing clear and convincing standard currently used in patent cases.
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In a recent decision from the United States District Court for the District of Delaware, the district court considered defendant’s motion for summary judgment of invalidity. The plaintiff’s patent is directed to a computer program for developing a component based software for the insurance industry. The patent contained both method and system claims.

Defendant’s moved for summary judgment on the grounds that the patent was invalid under Bilski v. Kappos, 130 S. Ct. 3218 (2010), contending “that the claims of the [patents] contain abstract ideas and fail the machine or transformation test.” Defendant contended that the plaintiff’s patents failed the “machine” prong of the Bilski test because the claims only require aspects of a general purpose computer. In addition, the defendant contended that the transformation test also could not be met because the transfer of data regarding insurance cases from one electronic file to another does not transform physical objects to another state or thing. According to the defendant, all of the claims reflect field of use restrictions or insignificant post-solution activity and, therefore, constitute unpatentable abstract ideas under ยง 101.
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To have a valid patent, an inventor must disclose sufficient detail in the specification to enable the patent, often referred to as the enablement requirement. To fulfill the enablement requirement, an inventor must disclose enough detail in the patent to teach a person of ordinary skill in the art to make the invention without undue experimentation. But an inventor cannot rely on the argument that one of ordinary skill in the art can fill in missing details from the specification. Indeed, recent case law demonstrates that inventors cannot rely on the person of ordinary skill in the art to serve as a substitute for missing information in the specification of the patent.

The case of Alza Corp v. Andrx Pharamaceuticals LLC, 603 F.3d 935 (Fed Cir. 2010), addressed this exact issue. For more information, please see a discussion of Alza.

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In a patent case pending against Intel in the District of New Mexico, the plaintiff sought to compel the production of Intel’s future products that were under development. The litigation involved plaintiff’s claim that Intel infringed its patent for a process called “double patterning,” which is a process that allows for the manufacture of smaller, more powerful computer processor chips.

Plaintiff sought production from Intel of a certain size of Intel chips that were not yet sold to the public and that would not be marketed until after September 2012, a date which is after the plaintiff’s patent expires. Intel argue that the information was not relevant to a reasonable royalty calculation and production of the information would be overly burdensome because the processes were likely to change multiple times before the launch of the product.

The plaintiff argued that it was entitled to production of the information under the theory of “accelerated market entry” and that production of research and development documents would not be overly burdensome.
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One of the district courts in the Eastern District of Texas has issued several orders in multi-defendant patent infringement cases addressing whether changes to the court’s normal scheduling orders were necessary. The district court has previously expressed concern in several cases that defendants may be faced with a Hobson’s choice of spending more than the settlement range on discovery “or settling for less than their cost of defending the case, regardless of the merits of the case.” The district court has expressed concern that the Patent Rules may not provide the most efficient case management schedule in those situations because of the quick discovery deadlines in the Eastern District of Texas.

In addressing a plaintiff that has sued 95 defendants across seven cases, the district court began by noting that it had previously expressed concern in cases where a plaintiff may assert questionable patent claims to extract cost of defense settlements. “The Court has previously expressed concern about cases where a plaintiff asserts questionable patent claims against a large number of Defendants to extract cost of defense settlements.”
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In pursuing patents for their inventions, inventors need to make sure that earlier filed provisional patent applications filed by other inventors do not preclude the inventor’s patent application. The Federal Circuit’s decision in In re Giacomini, (Fed. Cir. July 7, 2010) affirmed a USPTO Board of Patent Appeal’s decision that found the patent examiner properly rejected certain claims of a pending application. The decision in Giacomini occurred because an earlier filed provisional application by another inventor disclosed the same invention. Because the inventor failed to challenge the written description of the earlier filed provisional application, the inventor waived his right to do so on appeal and lost his patent as a result.

The Federal Circuit began by noting that “an applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application. Here, the inventor did not dispute that the earlier provisional application described the invention claimed in Giacomini’s application. As result, the Federal Circuit found that the provisional, which pre-dated Giacomini’s filing date, was the first U.S. application to describe the invention.
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In a recent decision from New Jersey, the district court granted a motion to dismiss for failure to state a claim. The district court granted the motion because the plaintiff’s patents did not qualify as patentable subject matter under the machine-or-transformation, which the United States Supreme Court has recently determine remains a useful test in determining patentable subject matter. In re Bilski, 130 S. Ct. 3218 (2010).

The patents at issue claim processes directed to a system for processing information from a template file to an application using “content instructions” and “customizable transmission format instructions” on a programmed computer. The plaintiff alleged that the defendant’s website infringed the patents because the website allowed customers to input information into a template as part of the purchase process. The defendant argued that the patents were invalid because they claim unpatentable abstract ideas.
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In a case involving application of the “first-filed action” doctrine and transfer, the district court in the Eastern District of Texas transferred a case as to one defendant but severed and kept the case as to two other defendants. One of the defendants in Texas, Interwoven, began the litigation, not in Texas, but in the Northern District of California by filing suit against Vertical Computer Systems, Inc. seeking a declaration that the Vertical patents were invalid and were not infringed by Interwoven. Vertical subsequently filed a patent infringement action on the same patents against Interwoven and two additional defendants, Samsung and LG, in the Eastern District of Texas. Samsung then filed a declaratory judgment action in the Northern District of California.

In analyzing the first-filed action doctrine on a motion to transfer, the district court agreed that the Interwoven action was filed first and that therefore the case against Interwoven should be transferred to the Northern District of California. The district court disagreed with Samsung, however, and found that the action against Samsung should remain in Texas as Samsung was not a party to the first filed case.
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The written description requirement is of heightened importance in determining the priority date for continuation patent applications. Without a sufficient written description that supports and details the claims of the patent, the priority date of the parent patent may be lost for the continuation application. This issue was recently addressed by the Federal Circuit in the Anascape, LTD. v. Nintendo of America, Inc., 601 F.3d 1333 (Fed. Cir. 2010) decision and the decision is useful to review to understand the consequences of failing to have sufficient support in the written description for claims in a continuation patent.

Click here for a more detailed discussion: Anascape, LTD. v. Nintendo of America, Inc.

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The district court determined that plaintiff had waived the attorney-client privilege because the plaintiff’s in-house counsel revealed too much information in answering questions during a deposition. The defendants raised the waiver issue in the context of a motion to compel by contending that the plaintiff’s in-house counsel’s answers during a deposition revealed attorney-client communications and therefore waived the privilege regarding the plaintiff’s motivation in seeking the reissuance of its patent.

The district court found that the in-house counsel “expanded on the statements to the PTO, revealing that because of the issue of the different effective filing dates, there was a specific concern that the mixed subject matter claims were technically anticipated by” another published application. The in-house counsel also explained that there were additional communications between himself and other in-house and outside counsel that led to this concern. The district court found that these types of statements were sufficient to waive the attorney-client privilege.
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