Quick appellate review of patent claim constructions: Is the door opening for interlocutory appeals?
The high reversal rate for claim construction is especially problematic because most claim construction decisions cannot be immediately appealed. Interpreting the claims is only the first step in the infringement analysis. After they're interpreted, that construction has to be applied to the accused product or process. Most often that's something the jury is supposed to decide, which means you may have to go through a long and costly trial before a judgment is entered. That judgment--either that the patent claims are infringed or they are not--is what the U.S. Court of Appeals for the Federal Circuit (the "Federal Circuit") ultimately reviews.
However, if the claim construction was wrong in the first place, the jury's verdict on infringement is usually wrong, too. That means a second trial will likely be necessary, which results in more work for the courts, more time lost in litigation, and more money spent on lawyers. The rub, argue critics, is that much of this additional expense and inefficiency could be avoided if claim construction opinions could be appealed prior to a final judgment on infringement.
... Read more
To begin with, the fact that one is practicing the prior art doesn't prove they're not also doing something that infringes. For example, if I design and build a car that uses a gasoline engine and has LED headlights, I'm practicing the prior-art inventions of Daimler and Benz for a gas-powered automobile. If a patent holder claiming to have invented the combination of LED headlights sues me, the fact that I'm practicing the prior art makes no difference. The real question is, do the patent claims cover the use of LED headlights on an automobile--and does my car infringe those claims. An infringement analysis is determined by comparing the claims of the patent to my device, "not by comparing the accused device to the prior art."
What people really mean when they say they are practicing the prior art is that they are not doing anything new. In other words, if the patent claims cover what they are doing, then they must be invalid because they read on the prior art. So why does it matter whether the issue is infringement or validity?
The answer lies in the burden of proof in patent cases. To prove infringement, a patent owner must convince a jury that, in light of all the evidence, it is more likely than not that the defendant infringes. At trial, the jury will see the patent and the accused product, and will hear testimony from experts on both sides of the case to inform its decision. Jurors realize that most of the witnesses they hear from have some bias in the case, so they rely on their judgment to decide which side is telling the truth. On the other hand, when the validity of the patent is challenged, the jury is asked to question the judgment of the Patent Office--which the jury knows is unbiased. To prove invalidity, the defendant must prove by the much higher "clear and convincing evidence" standard that the patent is invalid. In other words, the jury must decide that the Patent Office clearly made a mistake.
During the past 12 months, the U.S. Patent office issued approximately 182,000 utility patents containing millions of patent claims. Many of them are very likely invalid. But, they are all presumed valid until proven otherwise. Given the choice between convincing a jury that the U.S. government got it wrong in any particular case and proving that the plaintiff has it wrong, most of us would rather take on the plaintiff, which is why lawyers and their clients continue to argue the "practicing the prior art" defense.
If you thought that the issue of whether a patent covered the use of a microprocessor could only concern the computer or semiconductor industry, think again. High tech has extended its reach to zapping rats (literally).
Build a better mousetrap, and the world will beat a path to your door. Such were the aspirations of Bob Noe, the founder of Agrizap--maker of the patented Rat Zapper, a trap for dispatching pests through electrocution. Agrizap's Rat Zapper, which is about the size of a shoebox, is powered by four AA batteries, and is sold online for about $40 at RatZapper.com.
The slightly larger Rat Zapper Ultra uses D-cell batteries which, according to the Website, enables it to kill "even bigger, badder rats and mice." In the event of serious infestation, or for those with an overdeveloped desire to integrate their equipment, Agrizap also offers the ultimate high-tech equipment including its Battle Station command post and radio-monitoring equipment for use with its traps.
... Read moreThe U.S. Court of Appeals for the Federal Circuit will be on tour in Silicon Valley the week of November 3.
The court, which is in charge of reviewing appeals of patent-related cases for the entire United States, normally works only in Washington, D.C. So if you live near Silicon Valley, and you're interested in patent law, this is a rare opportunity to see the judges in your own backyard.
Judges from the court will hear cases at several locations during that week including at Santa Clara University School of Law, Stanford University School of Law, and the U.S. District Courts in San Francisco and San Jose. For more, see the court's official announcements.
Maybe you are of a sufficient vintage to remember the game show Let's Make a Deal. But have you ever thought about the similarities between that show and the U.S. patent system?
In the game show, contestants would have to pay a price (a wallet containing $500) to see what was behind door No. 3 (maybe a live goat; maybe a brand new faux wood-paneled station wagon). Similarly, in the U.S. Patent and Trademark Office, the government pays a price (allowing a unique brand of monopoly) to see what is in envelope No. 3 (your invention). The analogy may seem far-fetched, but the basic premise is the same: that is, paying a price to see what is otherwise concealed. And even in the realm of patent law, sometimes the government ends up with...a goat.
Fortunately, unlike the game show, there are several ways the USPTO can get out of the deal even after the envelope is opened and the invention disclosed. To be worthy of a patent, the invention must be new, useful, and non-obvious. While the "new" and "non-obvious" requirements normally get most of the attention, the USPTO and the U.S. Court of Appeals for patent cases (the Federal Circuit) have taken a somewhat surprising approach in the past couple of months to back out of deals with potential patentees--rejecting patent applications on the basis of usefulness. In other words, the Federal Circuit has been deciding that certain classes of inventions just aren't patentable.
What is really creating a buzz in the patent world is that the USPTO and the Federal Circuit have recently addressed an almost decade-old class of patents that has developed a reputation as the runt of the litter as far as patents go--business method patents. Love them or hate them, the Federal Circuit's 1998 decision in the State Street Bank case has been widely interpreted to allow for the patenting of new and novel business methods. Since that case, the USPTO has been inundated with business method patent applications and, more specifically, software applications. The question is, will this trend continue?
... Read more
Forum selection--or the ability to choose the geographic location of the court where a suit for patent infringement is litigated--is one of many controversial issues related to patents these days.
Generally, the first person to file the lawsuit gets to choose where the suit is brought. This is called the "first-to-file" rule. It works much like the lines you stand in at the grocery store, airport security, or countless other places; it's simply first come, first served.
However, in the context of patent litigation, being first in line is a big deal. Different courts have different procedural rules that can affect the way a case is litigated and the speed at which the case goes to trial. Moreover, there is a perception that courts in certain areas are more plaintiff-friendly than others.
The venue chosen by the most patentees over the last few years is the Eastern District of Texas. Rather than filing suit in Northern California near Silicon Valley or in New York, the most popular choice for patentees these days are small Texas towns like Marshall and Tyler. This is true even when both the plaintiff and defendant reside outside Texas.
While defendants can ask the court to transfer the case to a more convenient forum, lawyers commonly view such motions as near futile and potentially more harmful than helpful. For example, you can upset the local judge by saying you want out of his or her courthouse. Indeed, under the current rules, so much deference is given to who was first-to-file that patent infringement suits are often litigated in places that have almost nothing to do with the parties, the patents-at-issue, or any of facts underlying the case.
But those rules may be changing. This past Friday, the Court of Appeals for the Federal Circuit--the appellate court in charge of reviewing all patent cases--issued the Micron Technology decision (full text available here in PDF), which suggests that trial courts should give more weight to convenience in deciding where a case will be litigated.
In that case, the patentee, Mosaid Technologies, is a Canadian company operating in California. The company accused of infringement, Micron, did business in both California and Texas. Micron had filed a lawsuit challenging Mosaid's patents in California, and the next day Mosaid sued Micron for patent infringement in the Eastern District of Texas. The Federal Circuit ruled that under the particular facts of that case, California was the more convenient forum because neither the location of the parties, nor the availability of witnesses or evidence, favored Texas over California.
So will the Micron decision limit forum selection in patent cases? It's hard to tell. The court did say that the "first-filed suit rule...will not always yield the most convenient and suitable forum" and that instead of "automatically going with the first filed action, the more appropriate analysis takes account" of convenience.
Arguably, that wasn't as important in that case because Micron actually was the first-to-file. As such, some may dismiss the court's remarks as mere "dicta" (Wikipedia: dictum), that is, more of an editorial aside than true binding precedent.
Regardless, the Micron decision shows at least how some judges are leaning and, as such, where the law may well be headed.
- prev
- 1
- next
