Patent Law Year in Review A Look Back at 2011 and Ahead to 2012 January 19, 2012 Agenda 8:00 a.m. – 8:05 a.m. Introduction 8:05 a.m. – 8:25 a.m. The Supreme Court on Patent Issues in 2011 8:25 a.m. – 8:55 a.m. Patentable Subject Matter 8:55 a.m. – 9:15 a.m. Continuing Issues in Claim Construction 9:15 a.m. – 9:35 a.m. Section 112 in 2011: Written Description, Definiteness 9:35 a.m. – 9:45 a.m. --Break-- 9:45 a.m. – 9:55 a.m. Overview of the America Invents Act 9:55 a.m. – 10:25 a.m. The AIA – A USPTO Perspective 10:25 a.m. – 10:40 a.m. Reexamination in 2011 and Under the AIA 10:40 a.m. – 11:20 a.m. Evolving Contours of Patent Litigation 11:20 a.m. – 11:45 a.m. A Look Ahead at Key Patent Issues in 2012 11:45 a.m. – 12:00 p.m. --Break-- 12:00 p.m. – 1:00 p.m. Patent Law and Ethics in 2011 Table of Contents Tab Agenda Presentation Slides ........................................................................................................................1 Presentation Slides: Status Report: USPTO Implementation of the America Invents Act by John Calvert .............................................................................................................................2 Table of Cases ...............................................................................................................................3 Related Articles ............................................................................................................................4 Highlights of the America Invents Act (AIA): An Executive Summary of the New Patent Law Rajiv Patel Patent Alert: Historic Patent Reform Passes Congress, but Will Have Minimal Effect on Most Companies, September 12, 2011 Stuart Meyer, David Ahn, Robert Sachs and John McNelis First to File in the Unpredictable Arts: Change in Law Requires Balancing of Competing Interests, August 5, 2011 Nicholas Hurt and Michael Shuster The Patentability Black Hole Antonia Sequeira Classen v. Biogen Idec et al. – The Latest Installment in the Patent-Eligibility Arena Pauline Farmer-Koppenol, M.S., Esq. and Michael Shuster, Ph.D., Esq. Patenting Personalized Medicine Inventions after Myriad Pauline Farmer-Koppenol, M.S., Esq. and Michael Shuster, Ph.D., Esq. Litigation Alert: The U.S. Supreme Court Upholds a Clear and Convincing Evidentiary Standard for Patent Invalidity Under 35 U.S.C. §382 David Schumann, Ryan Marton and Samar Shah Patent Alert: Federal Circuit’s Therasense Decision Toughens Standards for Establishing Inequitable Conduct Betsy White and Darren Donnelly Patent Litigation Alert: In re: Link_A_Media Devices Corp. Darren Donnelly, Ryan Marton and Michael Saunders Patent Litigation Alert: Recent Developments and Potential Changes in the Litigation of False Marking Claims Under 35 U.S.C. §292, March 18, 2011 David Schumann and Erin Jones, Ph.D Speaker Biographies .....................................................................................................................5 Your Seminar Notes ......................................................................................................................6 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 Program Co-Chairs: Darren Donnelly, Heather Mewes, Rajiv Patel, Saina Shamilov Topics . The Supreme Court on Patent Issues In 2011 . Patentable Subject Matter . Cla im Cons truc tion . Section 112 . Overview of the America Invents Act (“AIA”) . The AIA — A U.S.P.T.O. Perspective . Reexamination In 2011 and Under the AIA . Evolving Contours of Patent Litigation . A Look Ahead to Key Patent Issues In 2011 . Patent Law and Ethics In 2011 2 Educational purposes only; Not intended to be legal advice 1 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 The Supreme Court on Patent Issues in 2011 Michael Sacksteder 3 Supreme Court in 2011 n Microsoft v. i4i . Clear and convincing affirmation of the stttatus quo n Global-Tech v. SEB . Oedipus defense doesn’t work n Stanford v. Roche 4 Educational purposes only; Not intended to be legal advice 2 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 Microsoft v. i4i Michael Sacksteder 5 A Much-anticipated Event 6 Educational purposes only; Not intended to be legal advice 3 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 A Much-anticipated Event 7 Questioning the Law of Gravity “Under §282 of the Patent Act of 1952, “[a] patent shall be presumed valid” and “[t]he bur den of esta blis hing inva lidity of a patent claim shall rest on the party asserting such invalidity, 35 U.S.C. §282. We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence.” 8 Educational purposes only; Not intended to be legal advice 4 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 i4i v. Microsoft Facts n i4i alleged infringement of “i4i’s patent” by Microsoft Word n Trial verdict for i4i n On-sale bar defense under 35 U.S.C. §102(b) . No dispute over timing of sale of i4i’s S4 product . Disput e wheth er S4 practiced clai med inventi on . Source code destroyed, inventor testimony . S4 issue never before PTO . Microsoft objected to jury instruction re standard of proof 9 Microsoft’s Proposed Hybrid Standard “Microsoft’s burden of proving invalidity and unenforceability is by clear and conviiincing evidence. However, Microsoft’s burden of proof with regard to its defense of invalidity based on prior art that the examiner did not review during prosecution of the patent-in-suit is by preponderance of the evidence.” 10 Educational purposes only; Not intended to be legal advice 5 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 Alternative Issues n Whether preponderance standard must always apply to invalidity defense n Whether preponderance standard must apply “at least when an invalidity defense rests on evidence that was never considered by the PTO in the examination process” 11 Issue One: Uniform Lower Standard? n Has Congress chosen a particular standard of proof? . No express mention of Clear and Convincing standard in statute . Presumption of patent validity . “Common-law term” — where used in statute, assume common-law meaning was intended . “[T]here is a presumption of validity, a presumption not to be overthrown except by clear and cogent evidence.” RCA v. Radio Eng’ g Labs, 293 U.S. 1, 2 (1934) . “more than a dubious preponderance” 12 Educational purposes only; Not intended to be legal advice 6 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 Issue Two: Lower Standard for Non- PTO Art? n KSR v. Teleflex on non-cited art: . “[T]he rationale underlying the presumption – tha t the PTO, in its expertise, has approved the claim – seems much diminished.” n But see: Congress, common-law terms, etc. If Congress had wanted a variable standard of proof, “we assume it would have said so expressly.” n Presumption “weakened” or “dissipated”? . “New evidence supporting an invalidity defense may ‘carry more weight’ . than evidence previously considered by the PTO.” 13 Why Do We Care? “Preponderance” = 50.000000000000000001% “Beyond a reasonable doubt” = beyond a reasonable doubt “Clear and convincing evidence” = ? 14 Educational purposes only; Not intended to be legal advice 7 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 A Question of Advocacy n “Same standard as the state applies when deciding whether to take a baby away from its mamma . ” n “Red Zone” 15 Global-Tech v. SEB S.A. Michael Sacksteder 16 Educational purposes only; Not intended to be legal advice 8 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 Inducement of Infringement “Whoever actively induces infringement of a patent shall be liable as an infringer.” 35 U.S.C. §271(b) 17 Elements of Inducement n Act(s) of inducement n Underlying direct infringement n Intent . To cause acts that constituted direct infringement? . Specific intent to cause infringement of patent? 18 Educational purposes only; Not intended to be legal advice 9 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 Specific Intent is Required n “Accordingly, inducement requires evidence of culpable conduct, directed to encouragiing another 's ifinfri ngement , not merely that the inducer had knowledge of the direct infringer's activities” DSU Medical v. JMS, 471, F.3d 1293, 1306 (Fed. Cir. 2006) (en banc) 19 DSU Medical v. JMS “The interesting portion of this opinion rests in Section III.B, where the CAFC convened an en banc panel to clarif y that ‘inducement’ of infringement requires intent to induce actual infringement, which necessarily requires knowledge of the patent.” Dennis Crouch 20 Educational purposes only; Not intended to be legal advice 10 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 Not So Fast . n Inducement requires specific intent to cause infringement of a particular patent n Have to be aware of the patent to do that n Except when you do not . 21 Willful Blindness? 22 Educational purposes only; Not intended to be legal advice 11 Fenwick & West LLP Annual January 19, 2012 Patent Law Year in Review 2011/2012 Or if you prefer . 23 Global-Tech Appliances n “Cool touch” deep fryer . Metal frying pot . Plastic housing . Air in between n Defendant copied design n Defendant conducted right-to-use study n Did not tell lawyer it had copied plaintiff’s design 24 Educational purposes only; Not intended to be legal