Posts Tagged: "defenses"

As pointed out astutely by RMail is that the Supreme Court jurisprudence on patent-eligibility under 35 U.S.C. § 101 have primarily involved ex parte prosecution appeals from the USPTO. There are only two instances involving patent litigation I’m aware of where the Supreme Court squarely determined patent-eligibility under 35 U.S.C. § 101: the recent case of Mayo Collaborative Services v. Prometheus Laboratories, Inc. (ruling that the claimed method was patent-ineligible under the “law of nature” doctrine); and the 2001 case of Pioneer Hi-Bred International v. JEM AG Supply (which ruled that sexually reproduced plants qualified as either “manufactures” or “compositions of matter” under 35 U.S.C. § 101). But as RMail correctly observed, no one seems to have pointed out to the Supreme Court this important threshold issue of statutory construction, and statutory limitations on the powers of the federal courts. Accordingly, Prometheus does not bar this Court from issuing a correct ruling in the present adversarial context.

Section 273 uses language that is untested in the court system. Clarity with respect to statutory construction is especially important to those who wish to take advantage of a prior use but will only later find out when tested during litigation that their use does not qualify under the statute. As argued by Sen. Roy Blunt, “assurances are all the more important for U.S. companies in the biotechnology field with extraordinarily long lead times for commercialization of its products.” [2] Therefore the scope of protection and reliance upon the defense is concerning to those who might enjoy this defense which may lead to a detrimental reliance on the part of those would be prior users.

However, if prior users are keeping their technology secret while being protected, that leap-frogging from one breakthrough to the next be impeded. Disclosure is the backbone of the progression of the sciences for this reason. “[T]he ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure.” Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 151 (1989). Sharing ideas allows others to improve upon the state of the art and as a result, better products such as medicine and consumer electronics are brought to market thereby driving our economy and benefiting the welfare of the U.S. as a whole. Prior user rights, on the other hand, will inhibit this progression.

If you think the title only raises a wild possibility, consider what happened in a recent case decided by the Federal Circuit. After being sued for infringement, the defendant had the ex-wife of the inventor of the patent-in-suit sell to it any interest she had in that patent. The defendant argued that as a result there could be no infringement, both because plaintiff lacked standing and because the defendant had acquired an undivided interest in the patent. It almost worked.

Exactly who is to blame if a pharmaceutical company, say Eli Lilly, decides to invest billions of dollars and build a facility when they haven’t adequately protected their own intellectual property? Moreover, who is to blame if that company consciously chooses to resort to trade secret protection, which we all know is exceptionally fragile, as the foundation to build a multi-billion dollar investment? For crying out loud, the very premise that a patentee could force the closure of a manufacturing facility employing hundreds or thousands of people and interrupt the production and distribution of anything, let alone something as consequential as a pharmaceutical, is nothing more than fantasy. Talk about chicken little! Only someone unfamiliar with the evolution of the law relative to preliminary and permanent injunctions in patent litigation could with a straight face much such an argument. Indeed, the mother of all straw arguments!

Companies accused of patent infringement are increasingly looking at patent reexamination at the Patent Office as an attractive avenue for challenging the patent’s validity. Reexamination offers a number of well-known advantages as a forum for such validity challenges over District Court, among them the absence of a presumption of validity and a lower burden of proof. Less well-known, however, is the potential for reexamination to eliminate an accused infringer’s liability for past damages – even if the PTO confirms the validity of a patent in reexamination, the accused infringer might be entitled to “intervening rights,” effectively eliminating past damages, if the patent owner amends its claims to distinguish its invention over the prior art. This possibility of “intervening rights” received a big boost last week with the CAFC’s decision in Marine Polymer Techs. v. HemCon, finding that such rights may be created even without an amendment of the claims if the patent owner presents arguments in reexamination that “effectively amend” the claims.

After first “threatening,” then being “silent” for over three years, the patentee in Aspex Eyewear was barred by the defense of equitable estoppel from getting any relief for patent infringement. What’s even worse, after the initial “threat” of infringement the patentee in Aspex Eyewear created this ticking estoppel time bomb by failing to mention (in follow up exchanges) the two patents for which suit was filed, while mentioning three other patents which were not involved in the suit that was filed.