patent cases and trends

Patent Cases Patent Cases and Trendsand Trends

MM 350 Intellectual Property Law and New Media

Important features fromImportant features from

Traditional cases

BILSKI ET AL. BILSKI ET AL. vv. KAPPOS, . KAPPOS,

No. 08–964. Argued November 9, 2009 No. 08–964. Argued November 9, 2009—Decided June 28, 2010 —Decided June 28, 2010

http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

Business method patent on a method of hedging risk in commodities trading

By only 5-4, the USSC upholds the validity of business methods patents and denies one to Bilski

Majority Opinion: A claimed process is patent eligible if:– (1) it is tied to a particular machine or

apparatus, or – (2) it transforms a particular article into a

different state or thing.

The patent at issue failed the test and therefore was not patent eligible.

Tivo v. Echostar (Fed. Cir. 2008)Tivo v. Echostar (Fed. Cir. 2008)

Tivo sues Echostar for infringing the ‘389 patent.– Hardware and software claims relating to

DVR’sJury verdict in favor of Tivo

– $74 million!!! Lost profits and reasonable royalties

– Permanent injunction

Tivo v. Echostar (Fed. Cir. Tivo v. Echostar (Fed. Cir. 2008)2008)

Echostar appeals to Federal Circuit:– Reverses and remands on hardware claims– Affirms software claims– Affirms damages award– Affirms permanent injunction – which had been

stayed pending appeal

Tivo v. Echostar Tivo v. Echostar

2008: USSC refused the case.2009: trial judge fined Echostar an

additional 103 million, plus interest.

Tivo-moreTivo-more

2009: Tivo wins another 200M. against Dish Network—roughly, same claims

2009: Tivo sues AT&T . . . .BUT– Microsoft sues Tivo (on two patents)

2009: Tivo sues Verizon….. BUT- Motorola, who supplied the sets to Verizon,

sues TIVO for infringement

Microsoft v. TomTomMicrosoft v. TomTom2:09-cv-00247 (W. Dist. Wash.)2:09-cv-00247 (W. Dist. Wash.)

Patent No.:US 6,175,789 Bl Date of Patent: *Jan.16,2001 VEHICLE COMPUTER SYSTEM WITH OPEN

PLATFORM ARCHITECTURE Inventors: Richard D. Beckert, Lake Stevens; Mark M. Moeller, Bellingtham; William S. Wong, Redmond, all of WA (US) Assignee: Microsoft Corporation, Redmond, WA (US) Filed: Sep. 10, 1999


ABSTRACT

A vehicle computer system has a housing sized to be

mounted in a vehicle dashboard or other appropriate location.

A computer is mounted within the housing and executes

an open platform, multi-tasking operating system. The computer

runs multiple applications on the operating system,

including both vehicle-related applications (e.g., vehicle

security application, vehicle diagnostics application, communications

application, etc.) and non-vehicle-related applications

(e.g., entertainment application, word processing,

etc.). The applications may be supplied by the vehicle

manufacturer and/or by the vehicle user.


Microsoft alleged:– TomTom's navigation products, which use the

open source Linux kernel, infringe on a handful of Microsoft's patents.

– Two of the patents cited by Microsoft cover legacy compatibility features in Microsoft's FAT filesystem, support for which is implemented in Linux.

TomTom responds:– Countersues Microsoft for infringing its patents for

various automobile navigation systems.


Case filed on 2/25/09 Case voluntarily dismissed on 4/2/09 Why?

MICROSOFT CORP. MICROSOFT CORP. vv. I4I LIMITED . I4I LIMITED

PARTNERSHIP ET ALPARTNERSHIP ET AL..CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR

THE FEDERAL CIRCUIT THE FEDERAL CIRCUIT

Over XML used in WORD No. 10–290. Argued April 18, 2011—Decided June 9, 2011 Microsoft lost at the trial level as well as multiple appeals. 200M judgment, and some fines for calling i41 a patent troll during

the case (had enjoined them from selling WORD for a short time) Microsoft attempted to get the USSC to lower the standard for

challenging a patent in cases in which the particular aspect within the patent had not been challenged as prior art at the time of the filing. – Wanted “preponderance of evidence” as opposed to “clear and

convincing evidence” USSC said “no thanks, the high standard is just fine

Apple v. SamsungApple v. Samsung

Apple wins injunction in US, in both Europe and U.S. for patent infringement.

Jury awards Apple 1 B$+ – http://techcrunch.com/2012/08/24/apple-wins-

patent-ruling-as-jury-finds-samsung-infringes/– Samsung only wins in Japan

Top Trends In PatentsTop Trends In Patents

Patent Reform – America Invents ActThe rise of the patent trollNo insurance or indemnity for patent

infringement claimsPatentability of isolated human genes

Patent Reform – America Invents Patent Reform – America Invents ActAct

Signed into law 9-16-11Major provision

– Moves from “first to invent” to “first inventor-to-file” – priority now based on filing date.

Criticism: A first inventor-to-file system may impede the small, unfunded (or underfunded) inventor

The Rise of the Patent TrollThe Rise of the Patent Troll

What is a patent troll?– Parties who file aggressive patent lawsuits– Other characteristics:

Often purchase patents from other companies in liquidation

Often have no intent to manufacture the patented product Cast a wide net in litigation to include parties who do not

copy the invention

– Other name: Non-Practicing Entities (“NPE”)

The Rise of the Patent TrollThe Rise of the Patent TrollYear Number of “Troll” Cases

2011 4,508

2010 3,854

2009 2374

2008 2065


What allows trolls to sue? – Patentee can sue for infringement

Includes successor No requirement that patentee make use or sell the

invention

What type of relief?– After eBay case, difficult to get injunction– Instead, a “reasonable royalty”

The Rise of the Patent TrollThe Rise of the Patent TrollAcademic debate:

– Pros: NPE acts as technology broker and facilitates a robust

technology marketplace. NPE makes funding available to start-up companies and

their backers.

– Cons: Trolls game the system. They are not interested in

inovation. They pursue the value of their inventions along with the value of investments made by defendants.


Troll Strategies:– File in “rocket docket” venues (e.g. Texas,

Delaware, Illinois)– Send onerous “document preservation” letters– Try to settle with smaller companies first to

build up litigation war chest Divide and conquer

No Insurance or Indemnity for No Insurance or Indemnity for Patent Infringement ClaimsPatent Infringement Claims

Insurance carriers reluctant to underwrite cost of indemnity and defense in patent claims.

Why?– $$$$$: patent awards can be large and are

increasing; litigation costs are rising.– Underwriting (estimates) are difficult to make, so

it’s tough to set premiums (and everyone knows that insurance companies hate to lose $).


Litigation ExpenseLitigation Expense


Parties refuse to assume the responsibility to indemnify and defend other parties for third party claims arising out of patent infringement

Patentability of Isolated Human Patentability of Isolated Human GenesGenes

Association for Molecular Pathology v. Myriad Genetics, Fed. Cir. 8-16-2012– Patent composition claims over “isolated”

human genes – BRCA1 and BRCA2 – are patent eligible

Non-naturally occurring compositions of matter

– Method claims directed to “comparing” or “analyzing” DNA sequences are patent eligible

Australian court says genes can be patentedAustralian court says genes can be patentedFeb 15 2013Feb 15 2013

An Australian federal judge has ruled that because the BRCA1 cancer gene has been "isolated" from the human body, it's appropriate to grant a patent on it. "The disputed claims extend only to naturally occurring DNA and RNA which have been extracted from cells obtained from the human body and purged of other biological materials with which they were associated," wrote the judge.

That's the exact opposite of the finding by the judge who heard the US case, who agreed with various doctors' groups and the ACLU that the whole idea of "isolating" genes really doesn't change the calculus. The patent holder was effectively demanding a monopoly on any doctors who viewed the gene, and that was unacceptable. The genetics company lost at district court, won at the patent-friendly US Court of Appeals for the Federal Circuit, and now has its case headed to the US Supreme Court.

The patent-holder in the case is the same one that claims to own the BRCA1 gene in the US, Utah-based Myriad Genetics. (Hat tip to Techdirt.) The case was brought by an Australian advocacy group, Cancer Voices Australia. Today's Australian ruling could be appealed to a three-judge panel, which would have the final say unless the case went to the High Court of Australia, the equivalent of the US Supreme Court.

The BRCA1 and BRCA2 genes are important because they can predict a woman's likelihood of contracting breast or ovarian cancer. In the US, the Myriad test can cost upwards of $3,000 and isn't always covered by insurance. In Canada, where Myriad has threatened but failed to enforce its patent, doctors have been able to offer test results for one-third of the US cost, and get results far quicker.

The politics of these gene patents in Australia differ from the US. One reason the ACLU targeted Myriad in the US was because of Myriad's vigorous enforcement efforts. The company sent cease-and-desist letters to researchers and threatened lawsuits. In Australia, Myriad outsourced its patent to a Melbourne company, which "gifted" the patent rights to many health care institutions and promised not to demand royalties for testing.

Human Genes May Not Be Patented, US Supreme Human Genes May Not Be Patented, US Supreme Court Ruled TodayCourt Ruled Today

13 Jun 2013 13 Jun 2013 The US Supreme Court ruled today that naturally-occurring human genes may not be patented

Writing for a unanimous court, Justice Clarence Thomas explained that a naturally-occurring DNA segment is a product of nature, it is not a human invention, and is thus not eligible for patent just because scientists isolated it.

but a gene that is manipulated to create something that does not exist in nature may be patented, because it is an invention.

if a gene is manipulated in a way that it becomes something unnatural, something we cannot find in nature, then it is an invention and is eligible for patent protection.

Though it looked like the company “lost,” they Though it looked like the company “lost,” they did not. The question has to be settled for every did not. The question has to be settled for every

aspect of every gene-related patentaspect of every gene-related patent

The main question for the Supreme Court justices in this case "Association for Molecular Pathology v. Myriad Genetics No. 12-398" was whether the genes the company isolated are human-made inventions or products of nature. A product of nature is not eligible for patent protection, while a human-made invention is.

In a communiqué today, Myriad Genetics Inc. wrote that the ruling has given it 500 valid and enforceable claims in 24 different patents conferring strong patent protection for its BRAC Analysis test.

Several of the company's unchallenged claims are method claims applying knowledge regarding the BRCA 1 and BRCA 2 genes, which were not at issue in this case. However, the Court highlighted Judge Bryson's opinion that "[a]s the first party with knowledge of the [BRCA1 and BRCA2] sequences, Myriad was in an excellent position to claim applications to that knowledge.”

It’s difficult to tell, in this (and many cases) which is the “battle” and which is the “war.”

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