Patent Office Trials Blog
    • 7/28/2015
      Sughrue Mion, PLLC is pleased to announce that Partner John B. Scherling has been selected to join the World Intellectual Property Organization (“WIPO”) List of Mediators.

      Mr. Scherling’s practice with Sughrue focuses on litigation and resolution of intellectual property disputes for the firm’s domestic and international clients. He previously served as an Assistant United States Attorney in the U.S. Attorney’s Office in the Southern District of California, where he received numerous awards from the U.S. Department of Justice and the Department of State. Mr. Scherling received his J.D. from Vanderbilt University, where he was Order of the Coif and Associate Articles Editor of the Vanderbilt Law Review. Following receipt of his J.D., Mr. Scherling served as a law clerk to the Honorable Judith N. Keep in the U.S. District Court for the Southern District of California.

      In nearly 30 years of practice Mr. Scherling has handled hundreds of matters in the United States courts, and repeatedly has been recognized as a San Diego / Southern California Super Lawyer in Intellectual property Litigation. His mediation training and experience includes the Harvard Negotiation Institute, Executive Education Intensive Workshop and the WIPO Mediation Workshop.

      As a member of the WIPO List of Mediators, Mr. Scherling is available to assist those parties across the globe facing intellectual property related disputes who take advantage of WIPO mediation procedures, including large and small and medium sized companies, individual inventors and artists, and universities. In recent years the WIPO Arbitration and Mediation Center has administered some 400 mediation, arbitration and expert determination cases. The subject matter of these cases include patent infringement, licensing, research and development agreements, technology transfer agreements, telecommunications related agreements and trademarks, as well as cases arising out of agreements in settlement of prior court litigation.
    • 6/30/2015
      As announced May 21, 2015, the USPTO will be entering into two pilot programs, one with the JPO and another with the KIPO. The goal of these programs is to determine whether a collaborative search for commonly filed applications can uncover better prior art and lead to more consistent results between Offices. Currently, the Patent Prosecution Highway (PPH) permits claims previously allowed in an Office of earlier filing to undergo accelerated examination in an Office of later filing. However, under the PPH, only the Office of later filing benefits from the prior examination, and the consistency of the examination results are not necessarily guaranteed. The new pilot programs are predicated on these bases.

      The pilots’ procedures are based on the First Action Interview (FAI) program. Under the FAI program, the Examiner provides his or her search results to the Applicants in advance of substantive examination of the claims. The Applicants may then opt to conduct an interview with the Examiner to discuss the results of the initial search. Neither the FAI program nor the new CSP programs require any additional fees. However, the most significant difference between the programs is that Applications under the CSP programs will be accelerated. In addition, participation in the programs limit Applicants’ rights to traverse in the event a restriction or election requirement is issued.

      Additionally, the two CSP programs will slightly differ from each other in an effort to determine which of the two variations is more effective. Specifically, in the program between the USPTO and the JPO, the information exchange happens prior to the Examiner fully forming the FAI based search report so that the FAI search contains both Offices’ input. On the other hand, in the program between the USPTO and the KIPO, the USPTO’s FAI based search report is conducted independently of the KIPO’s search report, and then both reports are provided to the Applicants for their consideration.

      The JPO-USPTO pilot begins August 1, 2015, and the KIPO-USPTO pilot begins September 1, 2015. Petitions will be accepted starting on these respective start dates. Each program will accept 200 applications per Office per year (both programs will run for two year with the option to extend). Eligibility requirements include: a maximum of 3 independent claims and 20 claims total; correspondence between the claims in each Office; the earliest priority date must be post-AIA; the Application must be unexamined in both Offices; and the Petition to participate in the program must be granted in both Offices.
    • 5/27/2015
      In the Commil v. Cisco Systems case (Case No. 13-896) before the Supreme Court, Commil accused Cisco of inducing users to infringe on its patented method to implement short-range wireless networks. Cisco denied the claim, and successfully won on appeal based on a good-faith belief that Commil’s patent was invalid. If the Supreme Court upholds the appeals court ruling, the decision could have a profound impact on patent law. “It would basically eviscerate the impact of a method of use patent and raise the bar to prove induced infringement,” says Angus Chen, a partner at Frommer, Lawrence & Haug LLP in New York City.
    • 5/18/2015
      Vringo Inc. (VRNG), the patent licensing company run by CEO Andrew Perlman, made a sound and reasonable argument in its petition to the U.S. Supreme Court to overturn an appellate court’s ruling throwing out a $30 million award and running royalty and invalidating patents at
      issue in an infringement action against Google Inc. (GOOG), though success remains doubtful, attorneys say.
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    • 7/29/2015
      米国連邦最高裁判所は2015年5月26日、Commil USA, LLC v. Cisco Systems, Inc. No. 13-896事件において、「訴訟対象特許が無効であると誠実に信じていた(a good faith belief)としても、そのことは当該特許に関する誘発侵害の抗弁とはならない。特許無効の信念があったとしても、誘発侵害の要件である故意を否定できない」と判示した1。
    • 6/23/2015
    • 6/23/2015
    • 5/26/2015
      Supreme Court, May 26, 2015

      The U.S. Supreme Court held that defendant’s belief regarding patent validity is not a defense to an induced infringement claim on Commil’s appeal of the ruling of the Federal Circuit that the trial court erred in excluding evidence of Cisco’s good-faith belief that Commil’s patent was invalid.

      In the first part of the opinion, the Court reaffirmed the holding of Global-Tech Appliances, Inc. v. SEB S. A., 563 U. S. ___ (2011) by agreeing with the Federal Circuit’s ruling that the District Court erred in instructing the jury that Cisco could be liable for induced infringement if it “‘knew or should have known’” that its customers infringed.  The Court held that liability for induced infringement can only attach if the defendant knew of the patent and knew as well that “the induced acts constitute patent infringement.”  Thus, the liability for induced infringement cannot be found in cases where the defendant did not have knowledge of the patent or in cases where the defendant “should have known” of patent.

      With respect to the main issue on appeal, whether a defendant’s belief regarding patent validity is a defense to a claim of induced infringement, the Court reasoned that the language of the statute, the precedents from analogous holdings, and the separation of the legal concepts of validity and infringement under the law show that belief in invalidity is no de­fense to a claim of induced infringement. 

      In particular, the Court reasoned that 35 U.S.C. § 271(b) of the Patent Act requires that the defendant “actively induce[d] infringement” and that the language requires intent to “bring about the desired result,” which is infringement. The Court further reasoned that because infringement and validity are separate issues under the Patent Act, belief regarding validity cannot negate the scienter required under §271(b).  In its analysis, the Court cited to various case law that held validity and infringement are separate issues.  For example, in Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U. S. 83 (1993), the Court explained, “A party seeking a declaratory judgment of invalidity presents a claim independent of the patentee’s charge of infringement.”

      The Court also reasoned that allowing this new defense would also undermine a presumption (of validity) that is a “common core of thought and truth” reflected in this Court’s precedents for a century. Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U. S. 1, 8 (1934). The Court further reasoned that because invalidity is not a defense to infringement, it is a defense to liability, a belief as to invalidity cannot negate the scienter required for induced infringement.  In addition, the Court weighed practical reasons not to create a defense based on a good-faith belief in invalidity including the fact that accused inducers who believe a patent is invalid have various proper ways to obtain a ruling to that effect and that creating a defense of belief in invalidity can render litigation more burdensome by incentivizing accused inducers to put forth a theory of invalidity and myriad of arguments.

      The Court cited to examples from analogous legal precedents to justify the holding that infringement may be induced where the defendant had a good faith belief in the invalidity of the patent.  In one example, the Court put forth that “an act may be ‘intentional’ for purposes of civil liability, even if the actor lacked actual knowledge that her conduct violated the law.” Jerman v. Carlisle, McNellie, Rini, Kramer & Ulrich, L. P. A., 559 U. S. 573, 582– 583 (2010).  In another example, a trespass “can be committed despite the actor’s mistaken belief that she has a legal right to enter the property.” Jerman, supra, at 583 (citing Restatement (Second) of Torts §164, and Comment e (1963–1964)).

      The Court also addressed the potential for frivolous claims caused by allowing a claim for inducement where a defendant has a good faith belief that patent was invalid by first acknowledging that no issue of frivolity was raised by the parties in this case, nor does it arise on the facts presented to this case Court. The Court reasoned that frivolous claims ban be dissuaded by other mechanisms such as Rule 11 and the procedures to invalidate a patent under the Patent Act.

      The Dissent, which was written by Justice Scalia and with whom Chief Justice Roberts joined, agreed with the Court’s rejection of the main argument advanced by Commil and the United States, that induced infringement under 35 U. S. C. §271(b) does not “requir[e] knowledge of the infringing nature of the induced acts.” However the Dissent disagreed with the Court’s holding that a good-faith belief in a patent’s invalidity is not a defense to induced infringement.

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