Guest Posts: Preparing for Mayo v. Prometheus Labs

By Professor John Golden, Professor in Law, The University of Texas at Austin

Pending Supreme Court and en banc Federal Circuit Patent Cases

By Jason Rantanen

Supreme Court Does not Decide Costco v. Omega Int’l Exhaustion Case

Costco v. Omega (Supreme Court 2010)

Global-Tech v. SEB: Petitioner’s Merits Brief

By Jason Rantanen

An Objective View of Fault in Patent Infringement

By Jason Rantanen

Supreme Court to Decide Microsoft Patent Case that Could Make it Easier to Invalidate Patents

By Dennis Crouch

Supreme Court to Hear Case on Inducing Patent Infringement

Global-Tech Appliances, Inc. v. SEB S.A. (Supreme Court 2010)

Microsoft (Again) Asks Supreme Court to Lower Clear and Convincing Standard

Microsoft Corp. v. I4I Limited Partnership (on petition for writ of certiorari 2010)

Patents that Exhibit “Potential Vagueness and Suspect Validity”

In eBay v. MercExchange (2006), the Supreme Court ruled that an adjudged infringer should only suffer permanent injunctive relief once the traditional four-factor test of equity had been satisfied. This general priciple was recently supported by the non-patent Supreme Court case of Monsanto v. Geertson (2010). In Monsanto, the court wrote “An injunction is a drastic and extraordinary remedy, which should not be granted as a matter of a course.” The court’s apparent patent-law-centrist, Justice Kennedy, wrote a concurring opinion suggesting that times-have-changed and that courts may have good reason to frequently deny injunctive relief. With some flair, Justice Kennedy suggested that the “potential vagueness and suspect validity of some … patents may affect the calculus under the four-factor test.”

Explaining Patentable Subject Matter: The First Bilski Test Cases


Guest Post on Bilski: Throwing Back the Gauntlet

Guest Post by Shubha Ghosh, Vilas Research Professor & Professor of Law at the University of Wisconsin Law School

Bilski v. Kappos

There is a good chance that the Supreme Court will issue a decision in Bilski v. Kappos later this morning. Supreme Court specialist Tom Goldstein writes hopefully: “The longest-outstanding case is Bilski, the business methods patent case. It has likely taken this long because the Court is being very careful with the details, and perhaps because of separate opinions addressing issues like software patents.” 

Bilski v. Doll: Reconsidering Patentable Subject Matter

Bilski v. Doll (Supreme Court 2009)

Supreme Court Asked to Expand Defenses to Patent Infringement

IGT v. Aristocrat Tech of Australia (on petition for certiorari)

Bilski v. Doll: Round I of Amicus Briefs

Bilski v. Doll (on petition for writ of certiorari 2009)

Applying Supreme Court Precedent

Carlsbad Technology v. HIF Bio (Supreme Court 2009)

Patently-O Bits and Bytes No. 92

  • New Commerce Secretary: Gary Locke. Former Washington State Governor, Partner at Davis Wright Tremaine. Gov. Locke is Chinese American and co-chairs the firm's China practice. He is also an Eagle Scout, a Yalie, and a Terrier.
  • USPTO Deferred Examination Comments Due February 26:

  • Cert Denied: The Supreme Court has denied certiorari in the following patent related cases.

    • Singleton v. Volkswagen (E.D. Texas Venue Case where 5th Circuit ordered transfer).
    • Forest Labs v. Caraco (Declaratory Judgment standing).
    • FTC v. Rambus (Duties of a patent holder in standard setting negotiations).
    • Burandt v. Dudas (When is a failure to pay "unavoidable").
    • Apotex v. Roche (reverse doctrine of equivalents).

  • Judge Linn recently gave a Keynote address to the PTO examiner's corps. [Read it here]. Judge Linn started as a patent examiner in 1965. The following are some quotes from the full speech:

    • "Your job is much harder now than it was for me all those years ago. The technology of today's inventions is immensely more complex than ever before. The length and breadth of applications is greater. The volume of prior art is much larger. The legal issues are more intricate and harder to comprehend. And the law is in a continual state of change. Compounding all of this is the perception among some individuals that the work of the PTO in general, and the examiners in particular, is somehow of secondary importance and questionable quality. It is commonly said that the real action in patents is in private or corporate practice."
    • "Your job is to grant patents—valid patents. And that takes a combination of skills, reasoning and informed judgment. The Examiner's task is to assess the patentable merits of each invention, as presented, and to grant patents where patents are due. No applicant wants an invalid patent. Similarly, no examiner wants to grant an invalid patent. Thus, both the applicant and the examiner play parallel and complementary—not contradictory— roles in seeing to it that valid patents are issued."
    • "[R]eading legal decisions, particularly those of the Board and the Federal Circuit, is not only the best way to learn how to make the tough decisions you are regularly called upon to make, but also the best way to make your job easier and more enjoyable. You might ask, "why should I bother to read decisions of the Board and the Federal Circuit? After all, I have all the guidance I need in the MPEP, and I don't have time to spend reading other cases that have nothing to do with me." The answer is that the cases bring to life the statutes and rules you are required to apply and give you real world examples of how those statutes and rules apply in similar cases. The MPEP has some guidelines, but they are just a sampling and cannot possibly reflect the full range of claims and circumstances you face every day. Keeping up with the law by reading decisions of the Board and the Federal Circuit will allow you to master your craft and will result in your standing out from your peers."
    • "The last point I want to make is to not forget about §112. … [I]t is not correct to trivialize or ignore these kinds of Informalities [such as claims that are vague and indefinite or lacking in support in the written description]. Indeed, these kinds of problems affect not only the applicant but the public as well in a significant way. … In case after case before my court, the central debate revolves around the meaning of claims terms that, for example, were added during prosecution and do not appear anywhere in the written description. For those cases, the meaning of the claim limitation has to be inferred from other words, leaving the issue open to unnecessary dispute and leading frequently to protracted and costly litigation. You have the authority and the responsibility to not let that happen and to insist that applicants use words in the claims that find unambiguous and full support in the written description."