Page 52 - IP Record
P. 52
50 The IP Record - 2014
IPO Amicus Briefs Filed in 2013 - 2014*
IPO fles amicus briefs in order to infuence government IP policy for the beneft of members. The IPO Amicus Brief
Committee and Board of Directors select a limited number of cases of interest to IPO members in which to fle each
year.
Click on any title for the full amicus brief.
Baxter International Inc. v. Fresenius USA, Inc., 13-1071 Brief Filed April 7, 2014
IPO supported U.S. Supreme Court review of the Federal Circuit’s decision in Baxter International
Inc. v. Fresenius USA, Inc. IPO said the Federal Circuit’s interpretation of fnality of a judgment in a
patent case appeared to expand the authority of the USPTO to supersede the judgment of an Article III
federal court. The Supreme Court’s guidance is needed because of uncertainty that has resulted from
the Federal Circuit’s ruling. IPO said the question will arise again if the Supreme Court does not clarify
the law.
A frst Federal Circuit panel upheld a district court fnding that the claims were infringed and not
invalid and remanded the case for reconsideration of injunctive relief and post-judgment damages.
While the remand was pending, a second Federal Circuit panel upheld a USPTO decision canceling the
claims upon reexamination. The Federal Circuit held that the infringement suit was not “suffciently
fnal” to preclude application of the intervening cancellation. The cancellation extinguished the under-
lying basis for the infringement suit.
Nautilus, Inc. v. Biosig Instruments, Inc., 13-369, Brief Filed March 3, 2014
IPO fled a brief urging the U.S. Supreme Court to discard the Federal Circuit’s current “insolubly
ambiguous” standard for indefniteness of patent claims. IPO urged a “reasonable clarity” standard that
would require the claims to be reasonably understandable to a person having ordinary skill in the art
in light of the specifcation and prosecution history. The new standard would limit patentable claims to
those giving the public reasonable notice of the scope of the protected subject matter.
Limelight Networks, Inc. v. Akamai Technologies, Inc., et al., 12-786 Brief Filed March
3, 2014
IPO fled a brief urging the U.S. Supreme Court to adopt a practical “single entity” rule for joint
infringement, under which direct infringement can be found where one party “directs or controls” the
actions of another. The rule is needed for the situation in which the actions of two or more actors must
be combined to establish that all of the steps of a method claim were in fact performed. IPO said the
direction or control test has suffcient fexibility to protect the patent owner from subversion of rights
through cleverly designed schemes to avoid infringement. A single entity must be liable for direct
infringement in situations where multiple entities perform acts that collectively perform the steps of
a method claim. IPO said the Federal Circuit erred in its 2012 decision in Akamai II by relieving the
patent owner of the need to prove direct infringement as a prerequisite to establishing indirect infringe-
ment.
Alice Corp. Pte. Ltd. v. CLS Bank International, 13-298, Brief Filed January 29, 2014
IPO’s brief in the U.S. Supreme Court said computer-implemented inventions, properly claimed, are
patent-eligible subject matter under the Supreme Court’s precedents dating back to the 19th century. A
claim for a computer-implemented invention involving an abstract idea is patent eligible if it describes
a specifc, practical application of the idea. IPO’s brief stressed that computer- implemented inventions
are pervasive and essential in the modern economy, and urged caution against upsetting decades of
settled expectations regarding their legal protection via patent rights.
* Through June 2014
Intellectual Property Owners Association
IPO Amicus Briefs Filed in 2013 - 2014*
IPO fles amicus briefs in order to infuence government IP policy for the beneft of members. The IPO Amicus Brief
Committee and Board of Directors select a limited number of cases of interest to IPO members in which to fle each
year.
Click on any title for the full amicus brief.
Baxter International Inc. v. Fresenius USA, Inc., 13-1071 Brief Filed April 7, 2014
IPO supported U.S. Supreme Court review of the Federal Circuit’s decision in Baxter International
Inc. v. Fresenius USA, Inc. IPO said the Federal Circuit’s interpretation of fnality of a judgment in a
patent case appeared to expand the authority of the USPTO to supersede the judgment of an Article III
federal court. The Supreme Court’s guidance is needed because of uncertainty that has resulted from
the Federal Circuit’s ruling. IPO said the question will arise again if the Supreme Court does not clarify
the law.
A frst Federal Circuit panel upheld a district court fnding that the claims were infringed and not
invalid and remanded the case for reconsideration of injunctive relief and post-judgment damages.
While the remand was pending, a second Federal Circuit panel upheld a USPTO decision canceling the
claims upon reexamination. The Federal Circuit held that the infringement suit was not “suffciently
fnal” to preclude application of the intervening cancellation. The cancellation extinguished the under-
lying basis for the infringement suit.
Nautilus, Inc. v. Biosig Instruments, Inc., 13-369, Brief Filed March 3, 2014
IPO fled a brief urging the U.S. Supreme Court to discard the Federal Circuit’s current “insolubly
ambiguous” standard for indefniteness of patent claims. IPO urged a “reasonable clarity” standard that
would require the claims to be reasonably understandable to a person having ordinary skill in the art
in light of the specifcation and prosecution history. The new standard would limit patentable claims to
those giving the public reasonable notice of the scope of the protected subject matter.
Limelight Networks, Inc. v. Akamai Technologies, Inc., et al., 12-786 Brief Filed March
3, 2014
IPO fled a brief urging the U.S. Supreme Court to adopt a practical “single entity” rule for joint
infringement, under which direct infringement can be found where one party “directs or controls” the
actions of another. The rule is needed for the situation in which the actions of two or more actors must
be combined to establish that all of the steps of a method claim were in fact performed. IPO said the
direction or control test has suffcient fexibility to protect the patent owner from subversion of rights
through cleverly designed schemes to avoid infringement. A single entity must be liable for direct
infringement in situations where multiple entities perform acts that collectively perform the steps of
a method claim. IPO said the Federal Circuit erred in its 2012 decision in Akamai II by relieving the
patent owner of the need to prove direct infringement as a prerequisite to establishing indirect infringe-
ment.
Alice Corp. Pte. Ltd. v. CLS Bank International, 13-298, Brief Filed January 29, 2014
IPO’s brief in the U.S. Supreme Court said computer-implemented inventions, properly claimed, are
patent-eligible subject matter under the Supreme Court’s precedents dating back to the 19th century. A
claim for a computer-implemented invention involving an abstract idea is patent eligible if it describes
a specifc, practical application of the idea. IPO’s brief stressed that computer- implemented inventions
are pervasive and essential in the modern economy, and urged caution against upsetting decades of
settled expectations regarding their legal protection via patent rights.
* Through June 2014
Intellectual Property Owners Association
