Amicus Briefs filed in Global Tech v. SEB

On December 6, 2010, Frommer Lawrence & Haug LLP filed a Brief of Amicus Curiae in Support of Neither Party on behalf of the Federal Circuit Bar Association with the Supreme Court of the United States in Global-Tech Appliances, Inc. and Pentalpha Enterprises, Ltd. v. SEB S.A. (10-6). The Court’s ruling in this case will decide the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U.S.C. § 271(b).

Under review is the judgment of the United States Court of Appeals for the Federal Circuit which applied “deliberate indifference of a known risk” that an infringement may occur as the culpable state of mind necessary to establish active inducement of infringement. This formulation is inconsistent with the Court’s prior case law, which taught that active inducement requires “purposeful, culpable expression and conduct” to encourage an infringement.

The Federal Circuit Bar Association, as amicus curiae, urges the Court to recognize that the state of mind element under § 271(b) is “purposeful, culpable expression and conduct” to encourage an infringement. This standard is consistent with precedential authority from both the Supreme Court and the Federal Circuit. Additionally, the Federal Circuit Bar Association urges the Court to clarify the boundaries of the state of mind element. The brief articulates a practical standard, rooted in Federal Circuit precedent, requiring (1) knowledge of the patent, and (2) knowledge that the induced activity may be an infringement.

The following also submitted amici in this action:

• New Egg, Inc.
• Software Freedom Law Center
• Clearinghouse Association and Securities Industry and Financial Markets Association
• Business Software Alliance
• Google, Inc.
• 41 Law, Economics, and Business Professors
• Motion Picture Association of America and Recording Industry
• Comcast Corporation, Facebook Inc., Intuit Inc., Microsoft Corporation, Netflix, Inc., Overstock.Com, Inc. and SAP America, Inc.
• Yahoo! Inc., Ebay Inc., Electronic Arts Inc., General Motors LLC, Hewlett Packard Company, McAfee, Inc., Red Hat, Inc., and Symantec Corporation
• Cisco Systems, Inc., Dell, Inc., and Intel Corporation
• Intellectual Property Owners Association

Respondent’s brief is currently scheduled to be filed by December 30, 2010. The Court has yet to schedule oral argument.

FLH attorneys providing counsel on the brief were Ed Haug, Mark Walters, and Chiemi Suzuki. Ms. Suzuki is Counsel of Record for the Federal Circuit Bar Association.

Washington State Patent Law Association Files Amicus Brief in Bilski

On April 4, 2008 the Washington State Patent Law Association (WSPLA) filed an amicus brief in support of Petitioner Bernard L Bilksi and Rand A Warsaw in the case currently under en banc consideration by the CAFC, In re Bilksi. My earlier posts on this case can be found here and here.

WSPLA's brief was signed by Michael Swope over at Woodcock Washburn. Also on the brief were Grzegorz S Plichta (Woodcock Washburn), Dale Bar, President of WSPLA and lawyer at Lee and Hayes, and Peter J Knudsen, IP counsel for Nastech Pharmaceutical Co., Inc.

Dennis Crouch over at Patently O, has a good summary of all Amicus Briefs filed in the case.

AIPLA Submits Amicus Brief in Bilski Case, Arguing for Broad Patentable Subject Matter

Here is a Link to the AIPLA Brief in the Bilski case. My post on this case is found here.

This is from the AIPLA post on the case:

AIPLA on April 7, 2008, filed an amicus brief with the en banc Federal Circuit, arguing that it is improper to apply the subject matter categories at 35 U.S.C. §101 narrowly to require that a process claim must be implemented by an apparatus in order to be patent-eligible under Section 101. In re Bilski, en banc Fed. Cir., No. 2007-1130.
According to the brief, Section 101 broadly encompasses anything under the sun made by man, and is limited only by the judicially-developed exclusions for laws of nature, physical phenomena, and abstract ideas. The brief maintains that this formulation provides a flexible rubric that promotes disclosure and adapts to yet unforeseen technologies, while retaining the safeguard against overbreadth in the traditional patentability requirements of novelty, non-obviousness, and sufficient disclosure to the public.

Amicus Briefs Filed in Egyptian Goddess v. Swisa

Amicus briefs in support of the respondent or neither party were filed earlier this week in the en banc case Egyptian Goddess v. Swisa. Calling this case "important" to the future of design patent law in the U.S. is probably a gross understatement. Here is a link to the en banc order. It could fundamentally change how design patent infringement and validity are considered, affecting wide sectors of American industry, from footwear to food. Here is a link to the AIPLA's original brief filed in support of the petition for rehearing. I was fortunate enough to have the opportunity to work with Kevin Kramer of Pillsbury Winthrop in connection with a brief we filed on behalf of the Federal Circuit bar Association.

At the bottom of this post is a link the the FCBA's brief, filed in support of neither party and arguing generally against the Panel Majority's "non-trivial advancement" test. The brief also argues for continued use of claims construction in design patent cases.

For some more information about this case, click here.

Amicus%20Brief%20of%20Federal%20Circuit%20Bar%20Association.pdf

The Art of Networking, A Seattle Patent Litigator's Perspective from the 2008 AIPLA Mid-Winter Institute in Phoenix, Arizona

I left a brutally cold Seattle early Wednesday morning for Phoenix, looking for three specific things at this year's AIPLA Mid-Winter Institute: (1) some sunshine; (2) timely, relevant, and expert information on IP; and (3) a bounty of networking opportunities. So far, my quest for sunshine continues. It poured rain for about 15 minutes today, and the temperature hovered around 50 degrees all day today and yesteday, while the sun remains obscured by some high clouds as I write this post. As for timely, expert, and relevant information on IP, I think I may have learned more by scanning my RSS reader for the latest IP news. One thing that has not disappointed is the networking opportunity here at AIPLA. What a great organization for building relationships and staying in contact with clients and fellow lawyers from around the country. AIPLA is great at putting faces to names I've heard (or read) about and at providing an opportunity to discuss (and sometimes debate/argue) key issues affecting the practice of IP law in the US and abroad. One topic that has been on my mind and provided much fodder for networking discussions is the current case on review en banc before the CAFC, Egyptian Goddess v. Swisa, Inc. As many if you already know, this is a case that may completely overhaul the law of design patent infringement. I've been working diligently with a colleague, Kevin Kramer, at Pillsbury Winthrop in Washington DC, to suggest arguments and positions to take in a possible amicus brief on behalf of the Federal Circuit Bar Association. (Both Kevin and I sit on the amicus committee for the FCBA). For some of the questions up for en banc review in the CAFC's order, there appears to be consensus among many in the IP community, while on others (like whether to do away with the "point of novelty test" for design patent infringement) disagreements abound. In any event, I can't think of a better place to be at the moment than right here at AIPLA, where I can ask questions of those lawyers working in the "trenches" of patent law, who can share real-life, practical concerns with the case and the potential implications of a shift in the law for design patent infringement.

This year's AIPLA Mid-Winter Institute is at the Arizona Biltmore hotel, a hotel whose design was inspired by the great architect Frank Lloyd Wright. I will be golfing on Saturday at one of the hotel's two golf courses. AIPLA is having a tournament in the afternoon, just before I return to Seattle.

Last night, I ran into one of the most well known and respected patent lawyers in the country, Don Martens. Don will be playing golf with us on Saturday along with another member of patent law royalty, Douglas Henderson, whom I had the pleasure of meeting last night for the first time. I've had each verify their handicaps, so there will be no "sand-bagging" at Saturday's tournament.