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US Supreme Court: Patent Holders Must Prove Infringment

Posted by timothy on from the telling-mom-what-you-did dept.

jfruh writes "The Supreme Court issued a ruling that might help marginally curb patent madness. Ruling on a case between Medtronic and Mirowski Family Ventures, the court rules that the burden of proof in patent infringement cases is always on the patent holder. This is true even in the specific case at hand, in which Medtronic sought a declaratory judgement that it was not violating the Mirowski patents."

17 of 143 comments (clear)

  1. Now the next step... by Moryath · · Score: 5, Interesting

    placing the burden on the patent holder to prove the patent is NOT the result of:

    - Patent slamming to game the system (e.g. submitting the same fucking thing 100 different times hoping one submission will slip by an overworked patent reviewer)
    - Patenting something already patented
    - Patenting something that is already obvious
    - Submarine-patenting

    1. Re:Now the next step... by manquer · · Score: 4, Interesting

      (e.g. submitting the same fucking thing 100 different times hoping one submission will slip by an overworked patent reviewer)

      I am not a fan of the current patenting system, but this is BS, a patent application costs $10,000, if the patent reviewer is overworked it has nothing to do with the abuse of the system, even considering a cost of $200,000 to the USPTO per patent reviewer including all the overheads a reviewer has to only review 20 patents a year to make the system viable.

    2. Re:Now the next step... by Anonymous Coward · · Score: 5, Informative

      I am not a fan of the current patenting system, but this is BS, a patent application costs $10,000

      LOL...if someone is charging you $10K to file it for you, then you are getting ripped off.

      http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm

    3. Re:Now the next step... by iamgnat · · Score: 3, Interesting

      I'll be the contrarian here and state the belief that this ruling isn't so good.

      The major issue, of course, is that there is massive abuse to the system, but if you look at what the system is supposed to do I think this ruling turns things more decidedly in the favor of large companies.

      The idea of the patent system was that anyone could patent their grand idea and then have legal backing to protect it in court from someone that uses the idea without consent. The filing fees were also designed to be low to keep the barrier of entry low enough that "the little guy" could get the same protection as the big corporations.

      Prior to this ruling (ignoring the shake downs by trolls) an individual or small company had a chance of winning a patent case against much larger entities (motions and legal wrangling aside) as the process of discovery forces the defendant to show their cards and prove they aren't infringing with no upfront cost to the plaintiff.

      With this ruling, if you come up with the next great search algorithm (software patent absurdity aside) and Bing/Google/Yahoo steals it you now have to foot the bill for the discovery. Without the court order you also aren't going to get very far in that process as they aren't exactly going to welcome you into their office, sit you down at a console, and give you access to their code.

      So what this ruling does, in my opinion, is give the larger companies the right to violate patents from smaller entities with near impunity. It also (as someone suggested further down regarding OSS projects) gives rise to a whole new possible "reverse-patent" trolling business scheme.

      Basically this ruling, I think, has made things worse.

    4. Re:Now the next step... by Sarten-X · · Score: 3, Interesting

      Physical patents do not require a working implementation, and haven't in quite some time. Rather, they only require enough detail that someone skilled in the art could create a working implementation of what's claimed using only common knowledge and the patent itself.

      For software, that means that if you're claiming a particular sorting algorithm, you have to include enough details about how that algorithm works that another programmer could duplicate the sort... but if you're not patenting the comparison operation, you don't have to include that, even if your algorithm requires some particular comparison to work. That's a trade secret.

      Also note that the title and abstract really don't matter. Most of the "vague" patents reported on Slashdot and other anti-patent sites have vague titles, but the claimse themselves are usually pretty detailed about the specific situation where the method applies.

      Continuing the analogy, a method for sorting 3D models might have a title of "Comparative sorting method", and an abstract that describes the need for sorting, both of which are sure to annoy Slashdotters. The patent claims could then detail a particular way of framing the problem, where we sort models based on their ratio.of filled-to-empty space, with a weighted preference for the appearance of space from particular projections. The algorithm itself might appear at first glance to be, say, a quick-sort, but with a few little tweaks to accommodate the multiple sorting criteria. As above, the actual method for computing filled space may be a secret that's left out of the patent, even though the patented mechanism is really useless without it. The end result is a patent that looks like "quick sort... now in 3-D!" but really describes a useful, novel, and non-obvious solution for a very specific problem.

      --
      You do not have a moral or legal right to do absolutely anything you want.
    5. Re:Now the next step... by viperidaenz · · Score: 3, Informative

      Without the court order you also aren't going to get very far in that process as they aren't exactly going to welcome you into their office, sit you down at a console, and give you access to their code.

      That's only really valid for software patents. Since you could just buy one of their widgets and pull it apart.

      If it makes software patents less appealing to file and more costly to pursue and harder to troll, good. They shouldn't be patents in the first place

    6. Re:Now the next step... by multimediavt · · Score: 3, Insightful

      I am not a fan of the current patenting system, but this is BS, a patent application costs $10,000

      LOL...if someone is charging you $10K to file it for you, then you are getting ripped off.

      http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm

      That $10k price is actually not bad, as the due diligence search has to be done first by the patent attorney. Typically, I've seen patents average closer $20k to file. They may also be searching and filing in other countries as well, CYA. So, if he's getting a 10k price he's doing ok. I would not try to self apply if you want the patent to stick. You need a good patent attorney.

  2. Costly discovery? by gstoddart · · Score: 4, Insightful

    I can see this leading to some pretty costly discovery for companies being sued.

    Because it's going to amount to "in order for us to prove you violated our patent, we need you to hand over all of your information so we can find the proof".

    I hope there is a provision for saying "OK, but we're going to charge you $100 million for our time in getting this" -- because otherwise this just allows the patent trolls to cause the people they accuse to incur massive costs which might make settling cheaper.

    You shouldn't be able to make someone bear the cost of you suing them based on something you can't prove without them doing the work for you.

    This reminds me of the SCO lawsuit, where the most they ever found was, what, 7 lines of infringing code which SCO themselves had nicked from AT&T UNIX?

    --
    Lost at C:>. Found at C.
    1. Re:Costly discovery? by Anonymous Coward · · Score: 5, Insightful

      This is EXACTLY the problem right now: filing an infringement claim is trivial, it only requires the plaintiff to assert infringement (not detail it). That currently triggers discovery which is costly for the defendant. Defendants thus settle for less than the cost of discovery. That is the essence of legal blackmail/patent trolling.

      SUPPORT PATENT REFORM IN THE SENATE.

      The markup happens in March. There is a hearing today as well.

      Stay early discovery or require costs to be borne by the plaintiff.
      Permit fee shifting when plaintiff's lose.
      Identify the real party in interest and REQUIRE a bond - shell companies currently do most of the trolling and are judgment proof (have no assets).
      PROTECT END USERS - using an API can get you a patent infringement lawsuit (if the API is alleged to infringe), offering wireless in your cafe gets you sued (because Cisco allegedly infringed on someones patent and you are using their device).

    2. Re:Costly discovery? by Karzz1 · · Score: 3, Informative

      This reminds me of the SCO lawsuit, where the most they ever found was, what, 7 lines of infringing code which SCO themselves had nicked from AT&T UNIX?

      A little off-topic I know, but IBM was never found to have infringed on any code from SCO. SCO tried to *claim* some code that was already licensed under a FLOSS license was the same as their code and thus infringed on their IP. They made a big deal of this to the press forcing them to sign NDA's & "showing them the code".

      --
      Beware of he who would deny you access to information, for in his heart he dreams himself your master.
  3. Yawn.... by American+Patent+Guy · · Score: 5, Insightful

    A plaintiff always bears the burden of proof in showing that he is entitled to the relief requested from the court. For patent infringement, that means showing a patent has been infringed.

    The only reason this is in the news is because the appellate court (the CAFC) screwed it up one time, and the Supreme Court had to make a return to sanity.

    1. Re:Yawn.... by tomhath · · Score: 3, Insightful

      RTFA. The Supreme Court ruled that the defendant has the burden of proof in this case

    2. Re:Yawn.... by Uninvited+Guest · · Score: 4, Informative

      Correct. The long version: The plaintiff in a patent case is usually the patent-holder, who is seeking damages for infringement. In those cases, the patent-holder-plaintiff already had the burden of proof. In this case, the (potentially infringing) plaintiff is seeking protection from patent infringement lawsuits by suing the patent holder, requiring the (patent holder) defendant to prove that the patents are valid and/or that the plaintiff infringes the patents. Normally (and the appeals court found), the plaintiff would have the burden of proof. According to the appellate ruling, the plaintiff (potential infringer, seeking protection) would have to prove that they were not infringing, or prove that the patents were invalid. The Supreme Court reaffirmed the lower court ruling: The patent holder, whether plaintiff or defendant, must prove that the other party (plaintiff or defendant) infringed the patents, and that the patents are valid.

      --
      Sometimes I worry that I'll develop Alzheimer's disease, but no one will notice.
  4. DOS Patent Trolls? by luciano.moretti · · Score: 5, Interesting

    How hard would it be for OpenSource Projects and Small Companies to file for a declarative judgement lawsuit for every software patent held by trolls? I'm assuming that filing fees would get cost prohibitive quickly, but would we be able to DOS attack the patent trolls and the courts they use to prove the point?

  5. Re:Haha wow by fast+turtle · · Score: 5, Informative

    Now Google can fight MS in regards to their claims of Patent Infringenment in Android and force them to prove it. If they fail, then MS is going to be out lots of money for the licenses they've charged for.

    --
    Mod me up/Mod me down: I wont frown as I've no crown
  6. You are misinterpreting this ruling. by pavon · · Score: 5, Informative

    If you sue someone for patent infringement you have always had the burden of proof, even before this ruling. All this ruling is saying is that if you threaten to sue someone, and they go to a judge first asking you to put-up or shut-up, the burden is still on you as the patent holder, same as if you had sued them.

    Secondly, this ruling does nothing to limit the discovery process. As a small inventor suing a big company you still have the same subpoena powers during discovery as you did before.

    In other words, the Supreme Court simply reaffirmed that accused infringers are innocent until proven guilty, regardless of the procedural nuances of how the lawsuit is initiated. None of the concerns you voiced will become worse due to this ruling.

  7. The cost is the lawyer by sjbe · · Score: 3, Interesting

    LOL...if someone is charging you $10K to file it for you, then you are getting ripped off.

    The cost isn't the patent submission fees. The primary cost is the lawyer you'll inevitably have to hire during the process. Getting a patent successfully through is actually more complicated than it might seem at first glance.