Archive for the ‘Federal Courts’ Category

When is a Patent Owner Entitled to a Court Order Stopping Infringement?

Monday, December 31st, 2012

apple v samsung

Consider this scenario: you have gone to all the time and expense to obtain a patent from the U.S. Patent and Trademark Office.   You have launched your product and your sales are good.  Now a pirate is copying your product and stealing your sales.  Are you entitled to a court order stopping infringement of your patent?

Before the U.S. Supreme Court decided the case of eBay v MercExchange in 2006, the answer would have been a resounding ‘yes.’  After the eBay case, the patent holder must demonstrate, among other things, ‘irreparable harm’ from the infringement and that an award of money damages to the patent holder is not enough to compensate the patent holder.  It is not enough to show harm – the patent holder must show that copying of the features specifically protected by the patent caused the harm.

The most recent application of the eBay decision is the ongoing worldwide Apple v Samsung litigation.  Apple recently proved that among other things Samsung copied Apple’s patented designs for the iPhone and iPad.  Apple was awarded a money judgment for $1.049 billion (that’s billion, with a ‘b’).   The trial judge decided on December 17 that Apple is not entitled to an injunction stopping Samsung from selling the infringing products.  The judge concluded that Apple did not show that the harm to Apple resulted from the specific infringement in question.  Apple still has the right to appeal the denial of the injunction to the Federal Circuit Court of Appeals.  Stay tuned.

– Robert Yarbrough, Esq.

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Patentable Subject Matter – The Issue That Will Not Die

Tuesday, July 31st, 2012

Whether an invention is the sort that can be patented is determined by §101 of the patent statute. That section states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

The issue of patentable subject matter is not a problem for physical inventions in the mechanical or electrical arts, but can present thorny problems for less concrete inventions, such as processes in the pharmaceutical, software and financial fields.

The U.S. Supreme Court has interpreted §101 several times, most recently in Mayo Collaborative Services v Prometheus Laboratories, 132 S. Ct. 1289 (2012).   The invention before the Court was a method of treating a particular disease by administering a particular drug, monitoring levels of breakdown products of the drug in the patient’s blood, and adjusting the dosage to achieve a specified range of concentrations.  The Court held that the invention was nothing more than an unpatentable ‘natural law;’ namely, the natural process occurring in the patient’s body of breaking down the drug in a way that indicated the effectiveness of the drug.  The other steps of the invention were not enough to convert this unpatentable ‘natural law’ into a patentable invention.  In considering whether the other steps were sufficient, the Court found persuasive that the drug, the breakdown products and the tests were old and well known.  The Court was concerned that patenting this or any other ‘natural law’ would preclude other researchers from utilizing the same law.

The Court specifically refused to adopt the PTO’s argument that whether an invention was old, obvious or vague should be considered under other sections of the patent law  and not under §101.   The Court flatly stated that those concepts are incorporated into §101.

The net result of Prometheus and other Supreme Court precedent is that at the margins patentable subject matter is a bit like pornography – the Supreme Court justices know it when they see it.  This approach makes life unpredictable for the PTO, for the Federal Circuit Court, and particularly for inventors in the pharmaceutical, computer software and financial services industries.  The dust from the Prometheus decision still has not settled and several cases are pending in the Federal Circuit that will apply the decision.

– Robert Yarbrough, Esq.

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Federal Courts’ Continued Hostility Toward Complex Patent Issues

Monday, February 28th, 2011

Call CenterIn the recently-decided case of In re Katz Interactive Call Processing Patent Litigation, the Court of Appeals for the Federal Circuit (which hears all appeals of patent cases) determined that trial courts may limit the number of patent claims that may be asserted by a patent owner in a litigation, regardless of the complexity of the invention or the number of defendants who allegedly infringe the patent. This decision is yet-another example of the unwillingness of the Courts to take on the often-intricate issues involved in patent enforcement litigation.

The Katz case involved 25 cases filed against 165 defendants, and 31 patents covering call processing systems that are commonly used by companies operating customer service call centers. The 31 patents contained a total of 1,975 claims. (The number of claims per patent was much larger than average, but the courts have previously ruled that there is no limit on the number of claims that an inventor may file, as long as the fees are paid to the Patent Office.)

The trial court, citing a need to efficiently manage the combined multidistrict litigation, ruled that Katz had to limit his case to 64 of his claims, and Katz appealed the ruling, claiming that the court had denied him due process and deprived him of property rights (by not allowing him to enforce his other claims.) Katz knew that claims not asserted could not be enforced later because of other rules.

The Court of Appeals ruled against Katz, stating that Katz, “has failed to demonstrate that the allocation of burdens in the claim selection procedure adopted by the district court unfairly prejudiced it by creating a significant risk that Katz would be erroneously deprived of property rights in unselected claims.” The Court said that because some claims were duplicative of others, Katz had to identify those claims that raised separate legal issues. This ruling seems to conflict with prior decisions that state that separate issued claims are presumed to differ from each other.

While there may be simple procedural explanations for the Katz decision, inventors and patent owners should beware that having a large number of claims that cover a complex invention may cause judges to run for cover, rather than to impartially preside over an attempt to enforce the patent in litigation.

–Lawrence A. Husick, Esq.

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