We will be discussing two recent Supreme Court cases.  The first maintains the standard of proof that must be met by a defendant in seeking to invalidate a patent.  The second concerns the scope of the interest retained by an inventor in an invention subject to the Bayh-Dole Act. We will discuss these cases in our weekly SoCal IP Institute meeting on Monday, June 13, 2011.  Brief synopses of the cases are presented below.

Microsoft Corp. v. i4i Limited Partnership et al., No. 10-290 (U.S. June 9, 2011) (attached). Microsoft was accused of infringing i4i’s patent on an improved method of editing computer documents.  In response to this suit, Microsoft argued at trial that i4i sold a computer software called “S4” in the U.S. embodying the patent more than a year prior to the filing of the application that became the at-issue patent.  i4i disputed Microsoft’s assertion that S4 embodied the patent.

At trial, Microsoft sought a jury instruction that the invalidity defense may be proven by a preponderance of the evidence.  The district court rejected this proposed instruction.  The jury found that Microsoft willfully infringed and did not find the patent invalid.  Microsoft appealed and the Federal Circuit affirmed.  On appeal to the Supreme Court, the Federal Circuit decision was affirmed.  In essence, the majority opinion indicated that the Federal Circuit’s understanding of the burden required by 35 U.S.C. Section 282 has not changed in more than 100 years.  In the alternative, Microsoft argued that with regard to evidence not before the PTO during examination, the preponderance standard should apply.  The Court disagreed stating that there are no caveats to the presumption of validity in the statute and the Court will not impose them.  Finally, the Court indicated that it sees no reason to alter the standard and suggested that such requests are more appropriately within the purview of Congress.

Stanford Univ. v. Roche Molecular Systems, Inc. et al., No. 09-1159 (U.S. June 6, 2011) (attached).  Stanford worked with Cetus (later purchased by Roche) and Dr. Holodniy to conduct research pertaining to a procedure for measuring the amount of HIV present in a patient’s blood.  Eventually, Stanford obtained three patents on the commercialized embodiment of the procedure.  Portions of the research were funded by the National Institutes of Health.  As a result, the Bayh-Dole Act applied to grant the U.S. Government an interest in the resulting patents.  Stanford elected to retain the patents, notified the Government and granted it a license.

Stanford sued Roche when it began selling HIV kits that allegedly infringed its three patents.  Roche responded that Stanford lacked standing because Holodniy’s agreement to assign to Cetus (coexistent with an agreement to assign to Stanford) granted it co-ownership in the patents.  The District court agreed with Stanford,  the Federal Circuit reversed finding that Holodniy’s agreement with Cetus was valid, even if the Government still retained an interest in the patents.  Further, the Federal Circuit found that the Bayh-Dole Act did not void an inventor’s rights in a federally funded invention.  The Supreme Court agreed with the Federal Circuit.

All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, June 13, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.