Most patents are drafted by patent prosecutors, many of whom have little to no litigation experience. This often leads to patents that present unnecessary issues for patent owners during litigation. Prosecutors must keep in mind that a patent is, first and foremost, a document that gives an inventor the right to sue for infringement -- plain and simple. A prosecutor should, therefore, draft patents assuming that they will eventually be litigated, and would be wise to learn the tactics that litigators often use to attack patents. Below is a short list of suggestions for prosecuting attorneys to keep in mind when drafting applications:
1. DO NOT IDENTIFY ANY EMBODIMENT AS PREFERRED: While a patent is not limited to the features described in preferred embodiments, litigators invariably try to equate the preferred embodiments to the invention itself. Optically, such an argument often has appeal to lay juries, who understand "preferred embodiments" as carrying more patentable relevance than others, especially if the accused infringer's product does not embody a "preferred" embodiment. I suggest using, instead, "example embodiment." This does not communicate that any one embodiment is "preferred" over any other.
2. NEVER, NEVER, NEVER DESCRIBE OR IDENTIFY ANYTHING AS "NOT" PART OF THE INVENTION. There is absolutely no reason whatsoever to state that something IS NOT part of the invention. When such language appears in patents (which I have seen on numerous occasions), accused infringers always attempt to convince juries that their accused products practice what the inventors said was "NOT" part of the invention. If it's "NOT" part of the invention, it shoud "NOT" be discussed in the patent.
3. DO NOT DESCRIBE ANYTHING AS "ESSENTIAL" TO THE INVENTION. No one element is "essential" to an invention, no matter what the inventor says. The novelty of an invention is in the entire claim as a whole -- i.e., in the claimed combination of ALL elements. When a prosecuting attorney describes something as "essential," a horrible thing happens -- claims not reciting the "essential" feature are invalid under 35 U.S.C. 112. It's best to avoid this practice.
4. DO NOT MAKE UNNECESSARY AMENDMENTS. This is a biggy. Sometimes a prosecutor will amend claims to "clean them up", or make more amendments than necessary to avoid a prior art rejection. Each time a prosecutor amends a claim element, that element is presumed under the "Festo Doctrine" to have lost its range of equivalents. It's much better to have an imperfectly drafted claim with no amendments than a perfect one with many. Why? Because invalidity arguments under 35 U.S.C. 112, p2, are almost never successful at trial. Unnecessary amendments also narrow the scope of the claim for no reason.
5. KEEP THE BACKGROUND OF THE INVENTION AS SHORT AS POSSIBLE. While a good background certainly places an invention into context, it almost never supplies written description or enablement for the claims of a patent and, as such, is not necessary for patentability. The more you write in this section, the higher the probability that something you write will come back to haunt the patent owner during litigation.
Friday, April 16, 2010
MedImmune, Inc. v. Genentech, Inc.: Licensees in Good Standing May Challenge Patent Validity – But at What Cost?
[Puiblished in 2007]
The Declaratory Judgment Act provides:
In a case of actual controversy within its jurisdiction, . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.28 U.S.C. § 2201(a). The “actual controversy” requirement is rooted in Article III of the United States Constitution, which only confers federal jurisdiction over “cases” and “controversies.”The Federal Circuit, which has appellate jurisdiction over all patent cases, has long held that a patent licensee in good standing cannot seek a declaratory judgment of patent invalidity or non-infringement because the patent license eliminates any “reasonable apprehension of imminent suit” and, with it, the requisite “case” or “controversy” required by Article III. In January, 2007, however, the Supreme Court held otherwise in MedImmune, Inc. v. Genentech, Inc. In MedImmune, the Supreme Court rejected the Federal Circuit’s “reasonable apprehension of imminent suit” test and held that a licensee is “not required, insofar as Article III is concerned, to break or terminate [a] license agreement before seeking a declaratory judgment in federal court that [an] underlying patent is invalid, unenforceable, or not infringed.” This holding may offer some licensees a choice they did not have before – (a) repudiate the license and risk paying treble damages for acts of infringement that occur during the patent challenge, as they were previously required to do, or (b) continue paying royalties while challenging the patent, thereby avoiding treble damages, but perhaps forfeiting these payments if the patent challenge is successful.
Practical Implications
Despite lingering uncertainties, licensors and licensees are left to deal with MedImmune’s practical effects. Licensees, for example, need to decide whether to repudiate a license before initiating suit and risk treble damages or opt for the “insurance policy” by continuing to pay royalties that may ultimately be lost if the patent challenge is successful. This decision is an economic one, and will invariably hinge on a cost-benefit analysis of each choice, the probability of a successful outcome, and the licensee’s tolerance for risk. Licensees should also consider whether litigation will make future dealings with licensors more expensive or altogether impossible, as licensors might, for example, demand greater royalties from “problematic” licensees than those who quietly cut a check.
Conclusion
Where the Federal Circuit once provided a bright-line test, the Supreme Court’s MedImmune decision has introduced a new degree of uncertainty as to what facts create subject matter jurisdiction for declaratory judgment actions challenging a patent. MedImmune itself will undoubtedly permit some patent licensees to challenge a patent while still paying royalties, although the licencees may forfeit recovery of the payments. Moreover, MedImmune’s holding may have application in broader jurisdictional disputes. Indeed, the Federal Circuit has already started applying MedImmune in declaratory judgment cases outside the licensing context. As such, parties need to carefully consider the financial and strategic ramifications at each stage of patent licensing and litigation in view of the new options and risks posed by MedImmune.
The Declaratory Judgment Act provides:
In a case of actual controversy within its jurisdiction, . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.28 U.S.C. § 2201(a). The “actual controversy” requirement is rooted in Article III of the United States Constitution, which only confers federal jurisdiction over “cases” and “controversies.”The Federal Circuit, which has appellate jurisdiction over all patent cases, has long held that a patent licensee in good standing cannot seek a declaratory judgment of patent invalidity or non-infringement because the patent license eliminates any “reasonable apprehension of imminent suit” and, with it, the requisite “case” or “controversy” required by Article III. In January, 2007, however, the Supreme Court held otherwise in MedImmune, Inc. v. Genentech, Inc. In MedImmune, the Supreme Court rejected the Federal Circuit’s “reasonable apprehension of imminent suit” test and held that a licensee is “not required, insofar as Article III is concerned, to break or terminate [a] license agreement before seeking a declaratory judgment in federal court that [an] underlying patent is invalid, unenforceable, or not infringed.” This holding may offer some licensees a choice they did not have before – (a) repudiate the license and risk paying treble damages for acts of infringement that occur during the patent challenge, as they were previously required to do, or (b) continue paying royalties while challenging the patent, thereby avoiding treble damages, but perhaps forfeiting these payments if the patent challenge is successful.
Practical Implications
Despite lingering uncertainties, licensors and licensees are left to deal with MedImmune’s practical effects. Licensees, for example, need to decide whether to repudiate a license before initiating suit and risk treble damages or opt for the “insurance policy” by continuing to pay royalties that may ultimately be lost if the patent challenge is successful. This decision is an economic one, and will invariably hinge on a cost-benefit analysis of each choice, the probability of a successful outcome, and the licensee’s tolerance for risk. Licensees should also consider whether litigation will make future dealings with licensors more expensive or altogether impossible, as licensors might, for example, demand greater royalties from “problematic” licensees than those who quietly cut a check.
Conclusion
Where the Federal Circuit once provided a bright-line test, the Supreme Court’s MedImmune decision has introduced a new degree of uncertainty as to what facts create subject matter jurisdiction for declaratory judgment actions challenging a patent. MedImmune itself will undoubtedly permit some patent licensees to challenge a patent while still paying royalties, although the licencees may forfeit recovery of the payments. Moreover, MedImmune’s holding may have application in broader jurisdictional disputes. Indeed, the Federal Circuit has already started applying MedImmune in declaratory judgment cases outside the licensing context. As such, parties need to carefully consider the financial and strategic ramifications at each stage of patent licensing and litigation in view of the new options and risks posed by MedImmune.
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