Orange County Business Journal Guest Column: Promising Case Law Trends for Patent Law

07/19/2011

Patent case law has gone through some roller coaster changes lately.  In particular, the 2007 KSR decision by the U.S. Supreme Court― which made it easier to invalidate patents on obviousness grounds― has been tempered by recent decisions.  The Court followed KSR with the 2010 Bilski decision concerning the patentability of business methods.  While the Court did not reject business methods per se, its discussion on what is patentable subject matter was quite ambiguous regarding what is and what is not patentable in the business method and software realms.  Therefore, applicants for business method/software patents must often fight patent office rejections that purport to follow Bilski

It was with this background that the Supreme Court recently issued the 2011 Microsoft v. i4i opinion.  The Microsoft case hinged on a stray comment in KSR regarding the presumption of patent validity.  In that regard, it had been black-letter law that a patent enjoyed a presumption of validity that could only be overcome by clear and convincing evidence.  In KSR, the Court invalidated the patent-in-suit using a reference that was not considered by the patent examiner.  The Court deemed that, even under the clear and convincing standard, the patent-in-suit was invalid over the reference never considered by the patent examiner.  However, the Court did not stop there, but went on to surmise that the rationale supporting the presumption of validity "seems much diminished" when a patent's validity is challenged with unconsidered prior art. 

Published in the Orange County Business Journal, July 11, 2011. To read the full article, click the PDF linked below.

PDF - OCBJ_promising_case_law_trends_for_patent_law 

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