How the Courts Have Changed the Patent Law

• Author: Alexander I. Poltorak/Paul J. Lerner
• Profession: Is the founder, Chairman, and CEO of General Patent Corporation (GPC), an intellectual property (IP) firm focusing on intellectual property strategy and valuation, IP licensing, and enforcement/Is the Senior Vice President and General Counsel of General Patent Corporation (GPC)
• Pages: 185-208

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CHAPTER 11

How the Courts Have

Changed the

Patent Law

After reading this chapter you will know:

How landmark legal decisions in individual lawsuits change

patent law, as it is actually practiced, more often than

amendments to actual patent law statutes.

The basics of the Bilski case and how it raised issues of

patentability.

How the eBay case made it much more difficult for a

nonpracticing entity to obtain a permanent injunction

against an infringer.

The background of several other major cases that changed

patent law with regard to willful infringement, false patent

marking, declaratory judgment actions, and many more

facets of intellectual property law.

P

lus Sca change, plus c’est la m^eme chose: The more things change, the

more they remain the same.

At least with respect to the patent law, the French got it

wrong—although what can you expect from people who consider Jerry

Lewis a comic genius? When the patent law changes, it really changes.

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In the United States, the law is composed of statutes and the court deci-

sions that define and simplify (legal euphemisms meaning ‘‘confuse’’ and

‘‘alter’’) them. The statutes are relativelyfew in number and rarely amended

(more on this later). The court decisions, however, just keep coming.

Among the most significant of the recent decisions are the following:

Bilski, which relates to business method patents.

KSR, which relates to the obviousness (patentability) of an invention.

Muniauction, which relates to method claims.

Sandisk and MedImmune, which relate to declaratory judgment

actions.

Seagate, which relates to willful infr ingement.

eBay, which relates to permanent injunctions.

Egyptian Goddess, which relates to infringement of design patents.

Aristocrat, which relates to adequacy of disclosure of the invention.

Forest Group, which relates to false marking.

(Keep in mind that the name of the case, or even just one of the

parties to the lawsuit, becomes a keyword for an entire thicket of thorny

legal issues—so, for example, patent attorneys are conditioned to begin

arguing the merit s of business method patents at the mere men tion of

the word Bilski.)

In this chapter we take a look at each of the se landmark cases and

their significance to patent law. First, let’s examine the case that had pat-

ent attorneys nervous for nine months: Bilski v. Kappos.

Bilski

: Nine Months’ Gestation But No Birth

The Bilski decision is to patent attorneys what politics is to late-night

television—an unending source of material. Str ictly speaking, this case

relates to the scope of patentable subject matter (i.e., what types of in-

ventions can be patented). As a practical matter, its greatest impact is on

so-called business method patents.

186 Essentials of Intellectual Property