Patent Law

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In a June decision, the U.S. Supreme Court resolved a key issue in patent law: whether a party can be liable for patent infringement when there is no underlying act of direct infringement.  Specifically, the court addressed whether a party who instructs multiple parties to perform different steps of a method patent can be liable for inducing infringement.  The Court’s answer:  no. The case is Limelight Networks, Inc. v. Akamai Technologies, Inc. (U.S. Supreme Court June 2, 2014) 2014 U.S. LEXIS 3817.

Patent infringement is either direct or indirect.  Direct infringement exists when a defendant makes, uses, sells, offers to sell, or imports into the United States a patented product or performs all of the steps of a patented method.  Indirect infringement exists when the defendant does not itself commit direct infringement, but causes another party to do so.  There are two types of indirect infringement: inducing and contributory.  A defendant has induced infringement when it instructs or causes another party to infringe a patent.  For a method patent, a defendant induces infringement if it instructs another party to perform all of the steps of the method.  The party who performs all of the steps is liable as a direct infringer, while the inducer is liable as an indirect infringer.  Contributory infringement, which is not relevant here, exists when a defendant sells or offers to sell a component that can only be used in infringing a patented invention.
Continue Reading No Inducing Patent Infringement Unless There is Direct Infringement

Last week’s column was the first of two columns discussing some of the most common misconceptions or myths about patents.  Here is the second part, starting with number five on my list.

5.            A Patent Does Not Give the Patent Owner the Right to Practice the Invention.

Inventors and patent owners often assume that a…

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts.  Patents themselves are sometimes almost unintelligible and, if intelligible, may require many hours of reading to understand.  It is no wonder that there are a lot of misconceptions or myths about patents.

This is the first of two columns in which I will discuss a few of the most common aspects of patent law that are misunderstood.

1.       Ideas Are Not Patentable.

Clients often want to patent an idea.  Ideas are not patentable – inventions are patentable.
Continue Reading Patent Myths Corrected – Part One

The United States Supreme Court was presented with the question of who has the burden of proof when a licensee files an action seeking a declaration of non-infringement against the patentee. In Medtronic Inc. v. Mirowski Family Ventures, 187 L.Ed.2d 703 (Jan. 22, 2014), the Supreme Court reviewed a decision by the Federal Circuit Court, which held that the plaintiff licensee has the burden of proving non-infringement. The Federal Circuit Court, in interpreting the Declaratory Judgment Act, found that Medtronic, as the plaintiff, carried the burden of proof to prove all elements of its claim, as does any other plaintiff. The Supreme Court reversed.

The defendant, Mirowski Family Ventures (“Mirowski”), owned numerous patents relating to implantable heart stimulators. Medtronic entered into a license with Mirowski to practice certain of Mirowski’s patents in exchange for royalties. Pursuant to the terms of the license, Mirowski notified Medtronic of Mirowski’s contention that several of Medtronic’s products violated Mirowski’s patents and, therefore, additional royalties were due. Medtronic disputed the claim, filed an action for declaratory relief, and accrued the disputed unpaid royalties in an escrow account as permitted under the license.Continue Reading PATENT HOLDERS BEAR THE BURDEN OF PROOF EVEN AS A DEFENDANT

By: Audrey A. Millemann

On January 22, 2014, the United States Supreme Court decided that a patent owner has the burden of proving infringement in an action filed by a licensee for a declaratory judgment of noninfringement. This case, Medtronic, Inc. v. Mirowski Family Ventures, LLC, 2014 U.S. LEXIS 788 (2014), reversed a Federal Circuit Court of Appeals decision holding that in such a case, the burden of proof shifts to the licensee to prove it did not infringe.

In 1991, Medtronic and Mirowski entered into a license. Medtronic made medical devices, including cardiac devices, and Mirowski owned patents covering heart simulator implants. The license provided that if Mirowski believed that a new product of Medtronic was covered by the patents, Mirowski would give notice to Medtronic. Medtronic could then choose one of three options: agree to pay royalties for the new product, pay royalties and also challenge Mirowski’s finding of infringement, or not pay royalties, when which would allow Mirowski to terminate the license and sue Medtronic for patent infringement. The parties later modified the license to allow Medtronic to pay royalties into an escrow account if it decided to challenge Mirowski’s finding of infringement, with the winner receiving those royalties.Continue Reading Patent Owners have Burden of Proof in Declaratory Judgment Actions