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Live from the IP Symposium: The Supreme Court's Patent Docket

03/21/2011

Panel Discussion: The Supreme Court's Patent Docket

Moderator: Professor Robert C. Kahrl, Akron Law

Panelists:
Gary Hoffman, Dickstein Shapiro LLP
Alan J. Kasper, Sughrue Mion, PLLC
Wayne Watkins, The University of Akron
Harold C. Wegner, Foley & Lardner

This panel is looking at the 3 cases pending in the Supreme Court (i4i, Stanford, and Global Tech) followed by a presentation on how to get your case in the Supreme Court.

 

Microsoft v. i4i (Gary Hoffman)

The issue is the burden of proof.  Since early 1980s, the standard has been "clear and convincing."  The particular prior art involved in this case was a prior use and this prior art was not before the PTO.  Microsoft argues that the clear and convincing standard is not in § 282 and because the PTO never considered this prior art, a preponderance of the evidence standard is appropriate.  i4i argues that the clear and convincing standard should be maintained because it is a long-standing precedent and the effects on US commerce would be negative.  Many amicus briefs have been filed in support of both sides (and neither side).

Why did the Supreme Court take this case?  Is it the existence of "patent trolls?"

What's the impact on value of patents and innovation? Mr. Hoffman notes he doesn't believe that changing the standard will have any effect on juries deciding invalidity.  He also questions what the parties will do if the standard is lowered?  Submit more prior art?  Less prior art?

Stanford Univ. v. Roche Molecular Systems (Wayne Watkins)

The Stanford employee assigned his future patent rights to Roche, but Stanford argues the invention belongs to it per the Bayh-Dole Act.   The Federal Circuit held the assignment to Roche was permissible.  The question the Supreme Court is answering is whether the Federal Circuit's ruling violates Bayh-Dole.

Mr. Watkins believes the Court took this case because of the conflict between the text of the statute and the intent and policy of the statute.

Global-Tech v. SEB (Alan Kasper)

The issue is whether the legal standard for the state of mind element of a claim for actively inducing infringement under § 271(b) is "deliberate indifference of a known risk" that an infringement may occur… or "purposeful, culpable expression and conduct" to encourage an infringement as the Court taught in MGM v. Grokster (a copyright case).

Mr. Kasper compared the statutory language of 271(a), (b), and (c) and finds a lack of language suggesting a standard for intent.  He further pointed out that there is a wide-ranging spectrum for the intent standard (ranging from no showing of knowledge or intent to a specific knowledge of the patent to deliberate indifference).

How to Get into the Supreme Court (Harold Wegner)

Mr. Wegner is discussing how to get your case before the Supreme Court.  Two suggestions he had, were, first, you need a bad decision by the Federal Circuit.  Second, you need good amicus briefing on the cert question.  Mr. Wegner is particular impressed with Prof. John Duffy's and other law professors' influence in this regard.

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