Intellectual Property Quarterly Newsletter - Spring 2007

Editor's Note

William Kuhne

Intellectual property law is in a period of rapid evolution. In the past year, we have learned (among other things) that injunctive relief does not follow as a matter of course from a finding of patent infringement; that an alleged infringer need not fear an imminent infringement suit to file its own complaint for declaratory relief; and that patents should not be presumed to confer market power on patentees. This evolution promises to continue. In fact, on April 30, the Supreme Court issued its long-anticipated ruling in KSR on the obviousness standard and also decided in AT&T v. Microsoft that the exportation of software object code does not incur liability under the patent statute. In addition to assessing what is left of its "teaching, suggestion, or motivation" test for combining references to establish invalidity for obviousness in the wake of KSR, the Federal Circuit will soon be deciding the scope of waiver of the attorney-client privilege and work-product protection stemming from reliance on an opinion of counsel and whether a potential infringer has an affirmative duty to determine if it infringes a known patent. As a complement to our instant updates on ground-shaking developments (such as the Supreme Court's recent decisions), we hope that you find Morrison & Foerster's Intellectual Property Quarterly Newsletter helpful in keeping you grounded in the shifting sands of patent jurisprudence.

In this, the inaugural edition of our Intellectual Property Quarterly Newsletter, we discuss the Federal Circuit's resolution of its own internal conflict regarding the mental state necessary to induce patent infringement; the revived vitality of the inequitable conduct defense; and whether U.S. courts may take jurisdiction over claims on foreign patents.

Federal Circuit Goes for it on Fourth Down - Decides That Inducement Under 271(b) Requires Specific Intent to Cause Direct Infringement

By Martin Noonen

After "punting" on the issue in a series of decisions,1 the Federal Circuit recently clarified the "mens rea" required for inducement of infringement under 35 U.S.C. 271(b). In DSU Medical Corp. v. JMS Co. Ltd., 471 F.3d 1293 (Fed. Cir. 2006), the Federal Circuit held en banc that the intent required for inducement is to cause another to infringe the patent - not merely the intent to cause the acts that happen to constitute infringement:

"[T]he intent requirement for inducement requires more than just intent to cause the acts that produce direct infringement. Beyond that threshold knowledge, the inducer must have an affirmative intent to cause direct infringement." DSU, 471 F.3d at 1306 (en banc).

"[I]nducement requires evidence of culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities." Id.(en banc) (citing Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 125 S. Ct. 2764, 2780 (2005) and Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544, 553 (Fed. Cir. 1990)).

The full text of this article is available at:

www.mofo.com/news/updates/files/12326.html

The Resurgence of Inequitable Conduct as a Defense to Patent Infringement - (The Special Care Required When Submitting Affidavits to the PTO)

By Erica Wilson

For over a decade, the inequitable conduct defense to patent infringement has been regarded as a somewhat disfavored defense. Indeed, nearly 20 years ago, the Federal Circuit expressed its distaste for the assertion of the defense in nearly every patent infringement suit, and issued an opinion that served to curtail a district court's discretion to find inequitable conduct. Where the basis of an inequitable conduct allegation was false statements or omissions made in affidavits submitted to the United States Patent and Trademark Office ("PTO"), however, district courts were afforded somewhat broader discretion to find that inequitable conduct had occurred.

The full text of this article is available at:

www.mofo.com/news/updates/files/12328.html

Jurisdiction Over Foreign Patents: A Costly Dilemma for Patent Owners?

By Parisa Jorjani

Should U.S. courts decide claims for infringement of foreign patents? After 13 years of silence on this issue, the Federal Circuit recently held in Voda v. Cordis Corp. that a district court abused its discretion by allowing the patentee to add infringement claims based on foreign patents.

A basic principle of U.S. patent law is that it does not have extraterritorial effect; that is, patents granted in the U.S. may not be enforced abroad. Similarly...