No surprise in the first precedential decision of the Patent Trial and Appeal Board (PTAB) SecureBuy, LLC v. CardinalCommerce Corporation. PTAB denied a petition to institute a covered business method patent review, because petitioner had previously filed a declaratory judgment action in court that challenged the validity of the patent claims.
I say no surprise, since 35 USC 321-329 states covered business method patent review shall employ all statutory standards and procedures of post-grant review (i.e., 35 U.S.C. §§ 321–29) except for those expressly excluded (i.e., 35 U.S.C. §§ 321(c); 325(b), (e)(2), (f)).
Of course, this left the door open to applying 35 U.S.C. § 325(a)(1) which wiped the petition in all respects: (1) POST-GRANT REVIEW BARRED BY CIVIL ACTION-- A post-grant review may not be instituted under this chapter if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.
Yes it's first love or no love when it comes to the USPTO.
Copyright © 2014 Robert Moll. All rights reserved.
Showing posts with label declaratory relief. Show all posts
Showing posts with label declaratory relief. Show all posts
Monday, August 4, 2014
Wednesday, January 22, 2014
Medtronic Inc. v. Mirowski Family Ventures, LLC - A Patent Owner Must Prove Infringement in Declaratory Judgment Action
Today, in Medtronic, Inc. v. Mirowski Family Ventures, LLC, the Supreme Court held when a licensee files a declaratory judgment action that products don't infringe a licensed patent, the patent owner must prove infringement.
Justice Breyer delivered the opinion for the Court and framed the question: "A patent licensee paying royalties into an escrow account under a patent licensing agreement seeks a declaratory judgment that some of its products are not covered by or do not infringe the patent, and that it therefore does not owe royalties for those products. In that suit, who bears the burden of proof, or, to be more precise, the burden of persuasion? Must the patentee prove infringement or must the licensee prove non-infringement?
The Court asserted legal logic supports "the burden of persuasion is with the patentee, just as it would be had the patentee brought an infringement suit." He stated it is well established that the burden of proving infringement rests upon the patent owner. The Declaratory Judgment Act is only procedural while the burden of proof is a rule of substantive law.
The Court also noted shifting the burden to the licensee could create uncertainty about the scope of the patent. Suppose an alleged infringer lost the declaratory judgment action because the evidence was inconclusive on non-infringement, the alleged infringer might continue in the same conduct, forcing the patent owner to file an infringement action. If the burden shifted, the patent owner might fail to prove infringement if the evidence was inconclusive. As a result nobody would know what products infringe. Thus, the declaratory judgment suit would not provide "an immediate and definitive determination of the legal rights of the parties."
The Court stated to shift the burden would make it difficult for the licensee to understand the patent owner's infringement claim, which the patent owner would be in a better position to know, while the alleged infringer would have to argue against every infringement theory.
The Court emphasized that burden shifting to the licensee is difficult to reconcile with the purpose of the Declaratory Judgment Act to ameliorate the dilemma posed by putting one who challenges a patent's scope to the choice between abandoning his rights or risking suit.
The Court was not persuaded by contrary arguments. It noted the Federal Circuit's lacked support in Schaffer v. Weast, 546 U.S. 49 (2005), since it was not a declaratory judgment case. It said the Federal Circuit's position that the holding applied only in the limited circumstances did not change the fact those circumstances are often present. The Court noted the patent owner started the dispute in response to the concern a licensee could force a patent owner into patent litigation.
The Court concluded the public interest didn't favor imposing the burden of proving infringement upon the licensee, since the public interest has a "paramount interest in seeing that patent monopolies are kept within their legitimate scope."
Copyright © 2014 Robert Moll. All rights reserved.
Justice Breyer delivered the opinion for the Court and framed the question: "A patent licensee paying royalties into an escrow account under a patent licensing agreement seeks a declaratory judgment that some of its products are not covered by or do not infringe the patent, and that it therefore does not owe royalties for those products. In that suit, who bears the burden of proof, or, to be more precise, the burden of persuasion? Must the patentee prove infringement or must the licensee prove non-infringement?
The Court asserted legal logic supports "the burden of persuasion is with the patentee, just as it would be had the patentee brought an infringement suit." He stated it is well established that the burden of proving infringement rests upon the patent owner. The Declaratory Judgment Act is only procedural while the burden of proof is a rule of substantive law.
The Court also noted shifting the burden to the licensee could create uncertainty about the scope of the patent. Suppose an alleged infringer lost the declaratory judgment action because the evidence was inconclusive on non-infringement, the alleged infringer might continue in the same conduct, forcing the patent owner to file an infringement action. If the burden shifted, the patent owner might fail to prove infringement if the evidence was inconclusive. As a result nobody would know what products infringe. Thus, the declaratory judgment suit would not provide "an immediate and definitive determination of the legal rights of the parties."
The Court stated to shift the burden would make it difficult for the licensee to understand the patent owner's infringement claim, which the patent owner would be in a better position to know, while the alleged infringer would have to argue against every infringement theory.
The Court emphasized that burden shifting to the licensee is difficult to reconcile with the purpose of the Declaratory Judgment Act to ameliorate the dilemma posed by putting one who challenges a patent's scope to the choice between abandoning his rights or risking suit.
The Court was not persuaded by contrary arguments. It noted the Federal Circuit's lacked support in Schaffer v. Weast, 546 U.S. 49 (2005), since it was not a declaratory judgment case. It said the Federal Circuit's position that the holding applied only in the limited circumstances did not change the fact those circumstances are often present. The Court noted the patent owner started the dispute in response to the concern a licensee could force a patent owner into patent litigation.
The Court concluded the public interest didn't favor imposing the burden of proving infringement upon the licensee, since the public interest has a "paramount interest in seeing that patent monopolies are kept within their legitimate scope."
Copyright © 2014 Robert Moll. All rights reserved.
Friday, December 27, 2013
Google DJ Action of Noninfringement of Rockstar Patents
Alan Cooper and Suzie Lipton sent email that I should consider giving some coverage to what is going on with Google's counter-suit against the Rockstar consortium patents this week.
As most know, Rockstar consortium is a patent holding company that includes as shareholders Apple, Microsoft, and RIM that outbid Google to purchase patents from the bankrupt telecom company Nortel for $4.5 billion. Media suspects Apple and Microsoft are using the Rockstar patents as a proxy to attack the Android ecosystem. Also rumored is the patents are not worth what many bidders thought and some are even up for sale.
There are many articles on this topic, and rumors make it difficult to know what is true. Part of the problem is the reporting from even stellar journalists mixes up even the basic terminology.
For example, in Google files counter-suit against Rockstar, seeking to avoid East Texas we were told "Rockstar Consortium, a patent-holding company formed from the bankrupt Canadian telecom company Nortel, sued Google and manufacturers of Android phones over patents almost two months ago" and "this week Google filed its counter-attack seeking to invalidate Rockstar's patents" (emphasis added).
As most know, Rockstar consortium is a patent holding company that includes as shareholders Apple, Microsoft, and RIM that outbid Google to purchase patents from the bankrupt telecom company Nortel for $4.5 billion. Media suspects Apple and Microsoft are using the Rockstar patents as a proxy to attack the Android ecosystem. Also rumored is the patents are not worth what many bidders thought and some are even up for sale.
There are many articles on this topic, and rumors make it difficult to know what is true. Part of the problem is the reporting from even stellar journalists mixes up even the basic terminology.
For example, in Google files counter-suit against Rockstar, seeking to avoid East Texas we were told "Rockstar Consortium, a patent-holding company formed from the bankrupt Canadian telecom company Nortel, sued Google and manufacturers of Android phones over patents almost two months ago" and "this week Google filed its counter-attack seeking to invalidate Rockstar's patents" (emphasis added).
I enjoy Mr. Mullin's contributions so I read the article, but found Google's complaint mentioned in the article was not seeking to invalidate Rockstar's patents. Instead, Google filed a Complaint for Declaratory Judgment of Non-Infringement for each of seven patents. It's not that the patent claims shouldn't have issued for invalidity; it's the patent claims don't describe Google's products or processes.
When much happens behind the scenes and one of my favorite journalists doesn't get the facts straight, you need to delve into the original sources of authority and/or wonder if it is not smarter to await further developments.
Copyright © 2013 Robert Moll. All rights reserved.
When much happens behind the scenes and one of my favorite journalists doesn't get the facts straight, you need to delve into the original sources of authority and/or wonder if it is not smarter to await further developments.
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, June 5, 2012
Oracle Sues Lodsys Seeking Declaration of Noninfringement and Invalidity of Its Patents
On June 1, Oracle filed an action for declaratory judgment of noninfringement and invalidity of Lodsys' US Patent Nos. 5,999,908, 7,133,834, 7,222,078, and 7,620,565. In support of declaratory relief, Oracle states Lodsys sent notice of infringement letters with claim charts along with follow up emails and phone calls to dozen of Oracle's customers, who of course want to be indemnified. Lodsys has even sued some of Oracle's customers including Walgreen, REI, and Epicor in the Eastern District of Texas.
The press give Oracle lots of kudos for suing to invalidate the Lodsys patents. Groklaw reports Oracle Sues Lodsys! "Oracle is now the good guy. Major good guy.... Get a load of all the prior art Oracle lists.... Lodsys has made a mistake. One doesn't go after Oracle's money. No. No. Never a good plan.... I suspect Oracle will go for damages, tripled, and all their expenses, legal fees, etc. when this is over.... DLA Piper is a global law firm with 4,200 lawyers so no place to run or anywhere on earth to get away from DLA Piper and its hard-core patent warriors. GigaOm tells us "Larry Ellison's company gets to be the good guy" in Oracle sues to smash patent troll Lodsys.
Oracle suing Google for patent infringement does not in my mind make it "a bad guy" nor does filing a declaratory judgment action against Lodsys make it "a good guy." Oracle and the press are merely taking predictable steps based on the following:
1. Oracle is aggressive and believes the courts are open for business. I say this not due to any inside information, but just watching Oracle in action for years. If Oracle believes you infringe its IP rights, it will tell you this and if you refuse to pay for a license, Oracle will go to court to resolve the differences. On the other hand, if you believe Oracle infringes your IP rights, it will review the charges, and if it disagrees is willing to go back to court to resolve the differences.
2. The press tends to give Oracle a hard time and buys into the myth that it is not nice to sue for patent infringement. So Oracle is "a bad guy" for suing Google for what it believes constitutes patent infringement? The irony is not the bad to good guy switch, but that many other companies (e.g., Apple in mobile patent wars) escape these labels and assert patents more vigorously to exclude others from using, making, selling, offering for sale, or importing their patented inventions.
3. Company management has a duty to manage all corporate assets. If a patent is infringed, valid and enforceable, management must maximize the return on the patent as a corporate asset. This is why Apple, Google, Microsoft, Motorola, Oracle, and Samsung continue to aggressively turn to the courts to assert IP rights. They seek a return on IP rights (e.g., patent, copyright, trade secret) and to reduce the IP licensing fees. Here Oracle customers were being threatened and sued and were asking Oracle indemnify them. Seeking to remove that expense made Oracle's DJ action forseeable.
4. A typical jury may be influenced by the myth that a patent owned by someone who practices the invention (e.g., Apple) is different than a patent owned by someone who does not. Hence, the complaint (demanding a jury trial) mentions Lodsys is not practicing the invention, i.e., it is a "patent troll." But US patents have nothing to do with whether the invention is commercialized or not (sometimes it takes years!) US patent law only cares about whether the invention is practiced when it comes to a remedy ( i.e., practicing patent owners may be awarded lost profits and non-practicing owners are typically limited to a reasonable royalty as damages).
5. The press tends to villify the "patent trolls" who seek licensing fees and disparages the inventors too! Dan Abelow, who I have never met, is disparaged as the self-styled inventor with no science degrees. However, the following link: www.abelow.com says Mr. Abelow has degrees from Harvard and the Wharton School of Business which appear to be adequate background for the four patents. Although I don't appreciate Lodsys' tactic to threaten the small software developers (where's the money?), Mr. Abelow's patents have been licensed by over 200 companies including Apple, Google, Microsoft, Nokia, Verizon, Sony, and Netflix. Somehow these things about this "patent troll" never get much mention.
Copyright © 2012 Robert Moll. All rights reserved.
The press give Oracle lots of kudos for suing to invalidate the Lodsys patents. Groklaw reports Oracle Sues Lodsys! "Oracle is now the good guy. Major good guy.... Get a load of all the prior art Oracle lists.... Lodsys has made a mistake. One doesn't go after Oracle's money. No. No. Never a good plan.... I suspect Oracle will go for damages, tripled, and all their expenses, legal fees, etc. when this is over.... DLA Piper is a global law firm with 4,200 lawyers so no place to run or anywhere on earth to get away from DLA Piper and its hard-core patent warriors. GigaOm tells us "Larry Ellison's company gets to be the good guy" in Oracle sues to smash patent troll Lodsys.
Oracle suing Google for patent infringement does not in my mind make it "a bad guy" nor does filing a declaratory judgment action against Lodsys make it "a good guy." Oracle and the press are merely taking predictable steps based on the following:
1. Oracle is aggressive and believes the courts are open for business. I say this not due to any inside information, but just watching Oracle in action for years. If Oracle believes you infringe its IP rights, it will tell you this and if you refuse to pay for a license, Oracle will go to court to resolve the differences. On the other hand, if you believe Oracle infringes your IP rights, it will review the charges, and if it disagrees is willing to go back to court to resolve the differences.
2. The press tends to give Oracle a hard time and buys into the myth that it is not nice to sue for patent infringement. So Oracle is "a bad guy" for suing Google for what it believes constitutes patent infringement? The irony is not the bad to good guy switch, but that many other companies (e.g., Apple in mobile patent wars) escape these labels and assert patents more vigorously to exclude others from using, making, selling, offering for sale, or importing their patented inventions.
3. Company management has a duty to manage all corporate assets. If a patent is infringed, valid and enforceable, management must maximize the return on the patent as a corporate asset. This is why Apple, Google, Microsoft, Motorola, Oracle, and Samsung continue to aggressively turn to the courts to assert IP rights. They seek a return on IP rights (e.g., patent, copyright, trade secret) and to reduce the IP licensing fees. Here Oracle customers were being threatened and sued and were asking Oracle indemnify them. Seeking to remove that expense made Oracle's DJ action forseeable.
4. A typical jury may be influenced by the myth that a patent owned by someone who practices the invention (e.g., Apple) is different than a patent owned by someone who does not. Hence, the complaint (demanding a jury trial) mentions Lodsys is not practicing the invention, i.e., it is a "patent troll." But US patents have nothing to do with whether the invention is commercialized or not (sometimes it takes years!) US patent law only cares about whether the invention is practiced when it comes to a remedy ( i.e., practicing patent owners may be awarded lost profits and non-practicing owners are typically limited to a reasonable royalty as damages).
5. The press tends to villify the "patent trolls" who seek licensing fees and disparages the inventors too! Dan Abelow, who I have never met, is disparaged as the self-styled inventor with no science degrees. However, the following link: www.abelow.com says Mr. Abelow has degrees from Harvard and the Wharton School of Business which appear to be adequate background for the four patents. Although I don't appreciate Lodsys' tactic to threaten the small software developers (where's the money?), Mr. Abelow's patents have been licensed by over 200 companies including Apple, Google, Microsoft, Nokia, Verizon, Sony, and Netflix. Somehow these things about this "patent troll" never get much mention.
Copyright © 2012 Robert Moll. All rights reserved.
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