Technically Legal

Podcast Special: Bilski

In this special episode we discuss the Supreme Court’s recent ruling in Bilski v. Kappos.

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Comments Off Posted in: Podcast on June 29, 2010

Bilski: Business Method Patent Invalid

Today the Supreme Court handed down its long awaited opinion in Bilski v. Kappos.

The opinion, authored by Justce Kennedy, affirms the Federal Circuit Court of Appeals, which held that the patent on hedging investments was invalid.

We discussed this way back in November on podcast episode 25. We’ll be doing more detailed analysis over the next few days.

Comments Off Posted in: Links on June 28, 2010

The new story about the Bilski case is how long it has taken the Supreme Court to release the opinion. The good folks at Patently-O have found a chart indicating the amount of time elapsed between oral argument and a written opinion in eighteen recent patent cases taken by the Supreme Court.

The average wait is about ninety days, with a median of seventy-seven. The nearest competitor to Bilski is KSR v. Teleflex, which totally re-wrote obviousness law, or, depending on how you look at it, brought the Federal Circuit back in line with what it always should have been. KSR took 153 days, meanwhile, Bilski will be a minimum of 210 days before its release. The next day opinions will be released is the 7th, with the last day to release opinions being the 28th of June. There is always a chance, albeit a slim one, that Bilski will be re-argued next term, if the Justices can’t come to a decision, or think one issue wasn’t sufficiently addressed the first time around.

So far no one is really revising what they think the outcome will be based on the delay, but delays in releasing cases generally indicates that the court is fragmented on how they want to rule. This would be a stark departure from recent patent cases taken by the Supreme Court, which have been decided unanimously.

Comments Off Posted in: Commentary on June 1, 2010

Myriad Genetics to Appeal S.D.N.Y. Ruling

Yesterday, Myriad Genetics expressed their disappointment and announced their plans to appeal Monday’s ruling which invalidated seven patents related to BRCA1 and BRCA2 genes and diagnostic testing for breast and ovarian cancer.

Given the highly contentious nature of patents related to human genetic material, it’s not really surprising that Myriad plans to appeal. I would even expect this litigation to be drawn out over the next several years–potentially to the point of Supreme Court review.

Another thing to keep in mind is that because these patents involve claims over methods of diagnostic processes (which arguably consist of mental steps) and gene isolation techniques, these types of patents may be subject to the Bilski case, which is still pending before the Supreme Court. The highly anticipated Bilski ruling is expected in the coming months.

Keep in mind we’ll be covering this case on this week’s podcast!

Comments Off Posted in: Commentary on March 31, 2010

Death to MS Word?: Microsoft Loses i4i Appeal in Patent Infringement Case

On December 22, 2009, the Federal Circuit ruled all issues on appeal in favor of i4i. The Federal Circuit reestablished the effective date of the injunction to January 11, 2010. Microsoft is left with few avenues in terms of the litigation. They can appeal to the Federal Circuit (again) and ask for a rehearing en banc. Another viable option maybe to appeal the Circuit court’s ruling to the Supreme Court. Finally, they can always wait and see what happens will the Bilski case, which was argued before SCOTUS earlier this fall, and hope the ruling affects the underlying validity of i4i’s patent (not an attractive option).

We covered the first part of this saga on our podcast back in August. In short, i4i Limited Partnership sued the 800 lb gorilla, Microsoft, for patent infringement based on its Patent # 5,787,449. The patent claims “a system and method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations.” The target of i4i’s litigation was Microsoft’s XML document editing software which is integrated into Microsoft Word (primarily affecting Word 2003 and 2007). More specifically, i4i claimed Microsoft willfully infringed the ’449 patent. After a jury found Microsoft guilty of infringement, the district court awarded i4i $200M for the infringement, an additional $40M because the infringement was willful, and pre- and post-judgment interest. Ouch.

Here’s the kicker though. In August, i4i filed a post-judgment motion seeking to permanently enjoin Microsoft from supporting, using, or selling editions of MS Word that contained the infringing technology. The motion was granted; and, Microsoft was dealt a serious blow to the gut. This sparked a fury of speculation in the blogopshere and media as everyone tried to figure out the fate of MS Word. As you might imagine, Microsoft did not lay down in defeat– instead they filed an emergency motion to stay the injunction. The stay was granted and Microsoft filed an appeal before the Federal Circuit challenging the ruling, arguing the District Judge erroneously construed a claim– in lay-speak, Microsoft argued that the Judge incorrectly applied meaning to a portion of the invention which made the patent broader than what was actually claimed. Additionally, Microsoft argued that the patent should be invalidated and injunction lifted through other precedent (KSR and EBAY) and pandered about with some other evidentiary arguments that occurred during the trial.

Most importantly, the injunction became effective this week, and Microsoft was forced to comply with it. Since the appellate decision, sources are reporting that Microsoft has indeed made changes to the software to comply with the ruling. The changes will apparently allow Microsoft to continue selling versions of Word without violating the injunction. Fear not! Word is here to stay– in some form. No word yet if it is technically feasible for Microsoft to redevelop the XML editor in a way which prevents them from violating the ’449 patent. However, I suspect Microsoft will do something to reincorporate the lost XML functionality back into future versions of Word.

Something that I have not seen covered on other blogs is how this injunction is affecting Microsoft’s corporate clients. I’ve already received a handful of phone calls from friends and even a family member asking about the Federal Circuit’s ruling. Each of these people are employed at the executive or senior executive levels of Fortune 500 companies and all expressed concern about how the ruling was going to affect their company’s future revenue streams. Undoubtedly, a large number of companies who develop products that depend on certain functionality (like XML manipulation) or proprietary file formats (DOCX and DOCM come to mind) might have just been hurt in a previously unanticipated way. Depending on what Microsoft changes, this might end up being the focus of more lawsuits from large corporate licensees. On a brighter note, maybe the litigation will turn around the economy? <kidding>

Stay tuned for more updates. I’m sure they are coming.

Comments Off Posted in: Commentary on January 14, 2010

Episode 25: Where’s My IHOP

Bilski, International Copyright Treaty, and Using Facebook as an Alibi

Please download the podcast, and e-mail us with comments, questions, or story ideas.

Bilski Arguments

Transcript
Analysis of Oral Argument

ACTA Internet Provisions

The ACTA Internet Provisions – DMCA Goes Worldwide

Facebook Alibi
His Facebook Status Now? ‘Charges Dropped’

Comments Off Posted in: Podcast on November 16, 2009

Bilski at the Supreme Court Today

Today, the Supreme Court hears arguments on the Bilski case.

While you can’t (yet) listen to a live stream of the arguments, the transcript is here.

In the meanwhile, here’s a smattering of news and analysis, courtesy of Google News. If you’re in the mood for something more incisive, take a look at Gene Quinn’s analysis of Bilski.

UPDATE 3:00 PM: SCOTUS Blog has the first post about the Bilski argument. In short, no one on the Court supported Bilski’s patent, but whether the Court will address software patents is up in the air.

UPDATE 6:40 PM: The post now has links to the transcript above, and here.

Comments Off Posted in: Links on November 9, 2009