August 2009

As the reader may (should) remember, patentability of methods or processes now requires that “it is tied to a particular machine or apparatus, or it transforms a particular article into a different state or thing” – the Bilski test. The term “particular machine” has remained largely undefined. Now, a district court in Arizona has sought to help fill this gap. (Research Corporation Technologies, Inc. v. Microsoft Corp.)

Patent litigation is costly and the price is not likely to decrease. Given this state of affairs, one might ask whether there is some way to limit or reduce the costs of enforcing a patent against infringers or – we shudder to think of it – defending against a charge of patent infringement. The answer to both parts of this question is YES and, more interestingly, in both cases the answer involves the use of patent reexamination.

Ten years ago, Amazon sued Barnes & Noble for allegedly infringing the now-infamous “1-click” patent. This suit created a frenzy among techno-geeks who vomited up a mountain of prior art and vituperative rant in an unsuccessful attempt to invalidate the Amazon patent. Now, Amazon is being sued by Cordance Corp. which has a patent on – you guessed it – a “1-click” ordering system. Cordance claims that its patent predates the Amazon patent.

Recently, a small software company, i4i Limited Partnership, won a patent infringement lawsuit against Microsoft Corporation. i4i was awarded Two Hundred Million Dollars ($200,000,000.00) in compensatory damages plus Fifty Million Dollars ($50,000,000.00) in post-verdict damages, prejudgment interest and post-judgment interest. Yes indeed, folks, a quarter of a BILLION dollars. This, in itself, is a joyous and newsworthy item. But, it gets even better.

The ever increasing incidence of unauthorized uploading and downloading of copyrighted material on the internet has given rise to a very significant question, namely: ‘what court has jurisdiction over the offending parties?’ Stated in law school terms, if party A, in State B, enters an unauthorized copy of a copyrighted work onto the internet and party C, in State D, where the copyright owner resides, prints a copy of this material, can the copyright owner sue party A in State D?

Who is an inventor or, more specifically, a co-inventor? The law provides that “each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.” Inventors A and B had jointly developed a belief that, under certain circumstances, stem cells would transdifferentiate into various other types of cells (the nauseating details are unnecessary). They were not, however, “scientifically certain” of their theory and lacked sufficient evidence to support a patent on their invention. Along comes Mr.

Large corporations are constantly railing against the alleged unethical conduct of NPEs (Non-practicing Entities, also pejoratively known as “trolls” and “those X!#?Z”) which have the temerity to sue when their patents are being infringed.

Now, in a surprising and long overdue turn of events, one of the NPEs has moved for sanctions against a large corporate defendant, claiming that the defendant’s allegations of inequitable conduct, leveled against the plaintiff’s founder and inventor, were a baseless smear campaign. (Intellect Wireless Inc. v. LG Electronics Inc. et al.)

In elementary school and Sunday school, we were repeatedly instructed that it was good – maybe even a religious obligation – to share what we had. Unfortunately for Jammie Thomas-Rasset, the federal court in Minnesota takes a decidedly different view. Capitol Records Inc. et al. v. Thomas.

In litigation, failure to meet a deadline may sometimes be excused if the tardy party can show “good cause” for its untimeliness. In a recent case, Hill v. Abercrombie & Fitch, the plaintiff sought leave to amend its preliminary infringement contentions (PICs), explaining that the infringement theory upon which it was now relying was not previously available. The Court, not surprisingly, inquired as to the nature of this theory.