×

Announcing: Slashdot Deals - Explore geek apps, games, gadgets and more. (what is this?)

Thank you!

We are sorry to see you leave - Beta is different and we value the time you took to try it out. Before you decide to go, please take a look at some value-adds for Beta and learn more about it. Thank you for reading Slashdot, and for making the site better!

US Supreme Court: Patent Holders Must Prove Infringment

timothy posted about 10 months ago | from the telling-mom-what-you-did dept.

Patents 143

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."

Sorry! There are no comments related to the filter you selected.

Now the next step... (5, Interesting)

Moryath (553296) | about 10 months ago | (#46047161)

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

Re:Now the next step... (4, Interesting)

manquer (1950350) | about 10 months ago | (#46047475)

(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.

Re:Now the next step... (0)

Xicor (2738029) | about 10 months ago | (#46047605)

that 200k does not go to the person doing the patents... likely the patent reviewer is hired at minimum wage, or close to it, and he has absolutely no reason to care. our system would be much better if the people doing the reviews actually got the full cost of the patent application.

Re:Now the next step... (1)

Mathinker (909784) | about 10 months ago | (#46048079)

our system would be much better if the people doing the reviews actually got the full cost of the patent application.

I can't for the life of me figure out why you think this will help. Why shouldn't reviewers just shove through as much junk as they can in as little time as possible? Your idea could possibly work if in addition, they would be penalized triple the cost for every patent they let through which is invalid --- but then, not many people would like such a high-risk job.

Re:Now the next step... (1)

Xicor (2738029) | about 10 months ago | (#46048129)

well, specifically, they wouldnt be getting the funds for each one they pass, or each one they fail, but each one that comes to their desk. if they each get 20 patents per year for 200k$, they are much more likely to actually do the work.

Re:Now the next step... (1)

Mathinker (909784) | about 10 months ago | (#46049695)

Oh, I see, no matter how quickly they do their work, they only get a fixed number of patents. Well, it might work, except that one would think they'd value their free time, also, even assuming they were forbidden to take on extra work on their "off hours".

Re:Now the next step... (1)

thaylin (555395) | about 10 months ago | (#46050181)

No they wouldnt. If I got x amount of money per y, then you maximize y to maximize x, so the more patent apps that cross their desk the more they get paid, which means that if I DONT do my job, and just pass or fail on a whim the more money I get paid, add in just enough work to get it done and pass a review.. It would be better to pay them enough to live plus a bonus, but they lose x% of their bonus for each patent that comes back invalidated, that would make them want to work.

Re:Now the next step... (2, Insightful)

Anonymous Coward | about 10 months ago | (#46048093)

If there is any federal agency paying any employee anything close to minimum wage, I'd like to see it.

Re:Now the next step... (2, Informative)

Anonymous Coward | about 10 months ago | (#46048455)

It took me about 30 seconds to find this using something called "Google":

http://www.opm.gov/policy-data-oversight/pay-leave/pay-systems/federal-wage-system/

The Federal Wage System is the pay scale used for low-wage, hourly government workers. I'm not going to do _all_ the work, but the lowest rate I could find--before I got bored--related to FWS is $10.27/hour. (http://www.cpms.osd.mil/Content/AF%20Schedules/survey-sch/045/045R-17Sep2013.html)

Where I come from that's less than minimum wage. Granted, it's not the federal minimum wage. But there may be other, lower pay scales. Alternatively, maybe nobody is actually paid that $10.27. I dunno. And neither do you. All you have are your myths and prejudices to inform you.

Re:Now the next step... (0)

Anonymous Coward | about 10 months ago | (#46048403)

that 200k does not go to the person doing the patents... likely the patent reviewer is hired at minimum wage, or close to it, and he has absolutely no reason to care. our system would be much better if the people doing the reviews actually got the full cost of the patent application.

You really have no idea what you are talking about. Patent Examiners all have bachelor's degrees in their respective fields and many have advanced degrees. An examiner's starting salary is over $60k (plus up to a 30% bonus) and with only a few years experience they can earn a base salary of over $100k per year.

Re:Now the next step... (1)

mspohr (589790) | about 10 months ago | (#46048471)

Do they get the 30% bonus for approving lots of patents regardless of quality?

Re:Now the next step... (5, Informative)

Anonymous Coward | about 10 months ago | (#46047657)

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

Re:Now the next step... (3, Insightful)

multimediavt (965608) | about 10 months ago | (#46048427)

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. [richardspatentlaw.com] 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.

Re:Now the next step... (2)

Moryath (553296) | about 10 months ago | (#46051067)

But what ACTUALLY happens is that the big companies have their own attorney on staff, whose job it is to robosign "due diligence searches" without bothering to do them.

The cost is the lawyer (3, Interesting)

sjbe (173966) | about 10 months ago | (#46049139)

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.

Re:The cost is the lawyer (1)

EuclideanSilence (1968630) | about 10 months ago | (#46049521)

That sounds like the cost for those who don't have full time lawyers on payroll.

Re:The cost is the lawyer (2)

pipedwho (1174327) | about 10 months ago | (#46051115)

More importantly, if you have your own lawyers on your payroll, the cost is negligible. Especially when you consider that those lawyers seemingly only spend 5 minutes on Google doing 'due diligence'. If they spent much longer, then far less obvious/pre-existing patent applications would be made. That, of course, doesn't excuse the patent examiner for rubber stamping it after seemingly spending another 5 minutes Googling the claims.

Re:Now the next step... (2)

sjames (1099) | about 10 months ago | (#46047761)

There is no $200,000 involved. They just keep resubmitting revised applications with trivial changes over and over on the same $10K fee.

Re:Now the next step... (2)

SQLGuru (980662) | about 10 months ago | (#46047691)

I'd also like software patents to have a working implementation which is what's actually covered by the patent.....much like physical patents. If I patent "sorting" (and yes, many software patents are that vague), it doesn't allow for bubble sort, selection sort, insert sort, quicksort, etc.

Re:Now the next step... (3, Interesting)

Sarten-X (1102295) | about 10 months ago | (#46048055)

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.

Re:Now the next step... (1)

viperidaenz (2515578) | about 10 months ago | (#46048243)

... because its not obvious to take an existing algorithm and do 'a few little tweaks' to make it suit your application?

Re:Now the next step... (1)

Sarten-X (1102295) | about 10 months ago | (#46048907)

Not necessarily, no.

Ideally, it depends on how much effort or insight is required for those tweaks, but there's no quantitative metric by which to judge insight or effort.

Re:Now the next step... (1)

viperidaenz (2515578) | about 10 months ago | (#46049093)

Not even obvious to someone skilled in the art of software development or mathematics?
Someone with a computer science degree?

Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art....

http://www.uspto.gov/web/offic... [uspto.gov]

Re:Now the next step... (1)

SQLGuru (980662) | about 10 months ago | (#46049565)

And yet, if I implement the same type of feature (with no knowledge of the magic sauce), I'm in violation of the patent.....even though it was obvious enough for me to come up with the same solution. Either the patent should include everything you need in order to implement the solution (so that I know when I'm violating it), or it shouldn't be a patent.

Re:Now the next step... (1)

Sarten-X (1102295) | about 10 months ago | (#46050971)

Yes, you would be in violation of the patent if you duplicate everything in the claims, but only if you duplicate what's in the claims. If you're using their magic sauce in some other context, such as a 3-D model catalog rather than a sorting algorithm, you're in the clear. If you can make their algorithm work without one particular claimed step (or doing that step differently), you're still fine. The patent itself does contain everything you have a risk of violating.

That someone's trade secrets are obvious is a different matter, outside the scope of the USPTO, and within the scope of ridicule and laughter.

Re:Now the next step... (3, Interesting)

iamgnat (1015755) | about 10 months ago | (#46048025)

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.

Re:Now the next step... (3, Informative)

viperidaenz (2515578) | about 10 months ago | (#46048299)

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

Re:Now the next step... (1)

Herkum01 (592704) | about 10 months ago | (#46048321)

Patent trolls had gotten to the point of just threatening people and winning because only the biggest players could defend themselves. Couple this with the fact the PTO giving out dubious patents, and the low cost of suing someone how can things get any worse?

Re:Now the next step... (1)

scottbomb (1290580) | about 10 months ago | (#46048327)

I disagree, based on presumed innocence. If you accuse me of infringing on your patent, you should be required to provide proof, as would be the case in any other legal proceeding. If I'm charged with a crime, the burden is on the prosecution to prove my guilt. Consider also a civil case. if you accuse me of being negligent in keeping my floor clean, causing you to slip and fall, the burden is on the plaintiff to prove that the floor really was a mess and I was negligent in not cleaning it.

Re:Now the next step... (2)

TheRealMindChild (743925) | about 10 months ago | (#46048409)

Presumed innocence doesn't apply in civil law

Re:Now the next step... (0)

Anonymous Coward | about 10 months ago | (#46050217)

Yes, it does. The difference is only that the burden of proof is frequently 51%, or a "preponderance of the evidence" rather than a criminal trial, which is usually 90%+, or "beyond a reasonable doubt".

Re:Now the next step... (1)

Anonymous Coward | about 10 months ago | (#46048461)

Actually the patent system hurts the millions of other little guys who aren't filing patents, but are just trying to get stuff done. Thus these sort of patents should actually be abolished.

So if a few little guys can't get monopolies on their supposedly brilliant idea, I won't shed too many tears.

Most ideas are obvious, trivial and not worth granting monopolies on. As history shows, when the time is right, you typically have more than one person independently coming up with the same idea around the same time. So why grant a monopoly? It just slows down progress.

And for those who are way ahead of their time, the time won't be right, and by the time the "market" is ready, the patent would have expired. Look how long it took for the market to be ready for the mouse much less the other stuff Engelbart and his team came up with.

So people with obvious ideas get rewarded, and the real geniuses don't.

To those who say without patents inventors would keep things a secret- nowadays patents are not written to help others implement stuff, they are written to PREVENT others from implementing as much as possible.

Re:Now the next step... (1)

multimediavt (965608) | about 10 months ago | (#46048469)

Agreed. The ruling certainly doesn't help the small, private inventor, but does benefit big corps. Not surprising from the court that made corporations people and money speech.

Re:Now the next step... (1)

MrBigInThePants (624986) | about 10 months ago | (#46048723)

So in other words working exactly as intended?

I am sorry, did you wake up in a different country or something??

You are misinterpreting this ruling. (5, Informative)

pavon (30274) | about 10 months ago | (#46048865)

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.

Re:You are misinterpreting this ruling. (1)

bill_mcgonigle (4333) | about 10 months ago | (#46049561)

infringers are innocent until proven guilty

They're "innocent" except they still have to reveal their trade secrets to competitors. Which will _never_ be used outside the discovery process. Wink, wink, nudge, nudge.

Re:Now the next step... (1)

morgauxo (974071) | about 10 months ago | (#46049783)

I think you would be correct in a perfect world where patents were actually working as intended however reality is far different.

Re:Now the next step... (1)

Whatsisname (891214) | about 10 months ago | (#46049903)

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.

This is completely false. Patents were never about the "little guy". Their purpose is to benefit society by providing an advantage to disclosing the secrets of invention so society can learn. Prior to patents, technology was often a closely guarded secret, belonging to individuals or trade guilds, secrets that were often lost with the deaths of the people involved. By making disclosure a more attractive option than secrecy, society could benefit by learning from the details of the inventions.

That is the idea of the patent system. "Little guy" doesn't mean shit, all that matters is having useful knowledge disclosed to society, whether its individuals or mega-corps.

Wow... (1)

TWX (665546) | about 10 months ago | (#46047171)

...I've become increasingly used to insanity when it comes to the court and advancing technology. Next you'll tell me that the court will find that it's unconstitutional to collect certain kinds of data without a warrant...

Re:Wow... (0)

Anonymous Coward | about 10 months ago | (#46047283)

It is though. I'm sure a judge will rule its unconstitutional to collect data about members of Congress or federal judges without a warrant. Everybody else can go to hell though.

Re:Wow... (2, Interesting)

Anonymous Coward | about 10 months ago | (#46047385)

The summary omits the central issues in the case. Medtronic had previously licensed patents from Mirowski Family Ventures for some of their older devices. Medtronics claimed their new devices didn't use the same methods and therefore decided not to continue to license the patents. The Federal Circuit Court (which is notoriously patent-holder friendly) decided that since Medtronics had previously been a licensee and they were the plaintiffs in the declaratory judgement suit (they had sued pre-emptively to have the court decide that they weren't infringing rather than wait for Mirowski to file suit) the burden was on them to prove that they didn't infringe. The Supreme Court disagreed 9-0 which should make fighting bogus patents slightly easier.

Makes sense (1)

MrNJ (955045) | about 10 months ago | (#46047183)

Patent is a property right.
If you are suing somebody for violating that right, you have to "make your case" so to speak.

Re:Makes sense (2)

tomhath (637240) | about 10 months ago | (#46047307)

Except in this case the party being sued was the patent holder. They needed to defend their request for royalties. It's odd because normally the plaintiff needs to prove they were damaged rather than the defendant proving that they would be damaged.

Re:Makes sense (0)

Anonymous Coward | about 10 months ago | (#46048447)

No, it is not! Patents are NOT property. They are a temporary monopoly allowed by the Constitution and make law by Congress.

until now. DEFENDANT has to prove (2)

raymorris (2726007) | about 10 months ago | (#46048757)

> if you're suing somebody ... you have to "make your case" so to speak.

Until now. Now, if you sue an inventor the burden of proof is on the person being sued. The plaintiff is asking that the court proactively rule that nothing they ever did infringes on any of defendant's patents. SCOTUS ruled that the defendant now has the burden of proof, so they have to figure out which product plaintiff is concerned about, which patent it might infringe and how, or else the court rules that none of the products infringes any patents.

By analogy, it's the same as me petitioning the court to rule that I never stole anything from you. The court agrees, saying that unless you figure out the puzzle and guess what I stole and when, I'll be deemed innocent and you can't come after me later when you realize that your gold watch is missing.

Costly discovery? (4, Insightful)

gstoddart (321705) | about 10 months ago | (#46047201)

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?

Re:Costly discovery? (5, Insightful)

Anonymous Coward | about 10 months ago | (#46047357)

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).

Re:Costly discovery? (0)

MrBigInThePants (624986) | about 10 months ago | (#46048759)

Oh yes. Support this amazing reform that will, once and for all, ensure that patents are the domicile of the large corporation!!

Viva la resistance!!

Pleeeasse. This whole thing continues to make me sick to my stomach.

Re:Costly discovery? (0)

Anonymous Coward | about 10 months ago | (#46049325)

Please explain how reforming the litigation rules surrounding infringement claims restricts patent enforcement to large corporations?

Please note that most small businesses, and associated individuals (like the App Developers Alliance) support the reform.

If you are making an equal access to justice argument: filing a claim against an infringer remains relatively trivial after reform (you just have to actually detail the infringement, and if you are wrong you are more likely to be on the hook) - so small inventors can just as easily access the courts for redress. The problem right now is the reverse: small businesses are effectively DENIED access to judicial proceedings/fairness because they cannot afford the IMMENSE fees up front which are NOT RECOVERABLE. They are pushed out of the judicial system BY THAT VERY SYSTEMS RULES!

CAPS CAPS CAPS :)

Re:Costly discovery? (1)

MrBigInThePants (624986) | about 10 months ago | (#46050389)

OK since apparently you or the moderators can't seem to get the obvious....

Instead of "fixing" the patent system (which they NEVER intended to do BTW) they have ensured that the only people who will be able to obtain and DEFEND (the important part) their patents will be large corporations with the lawyer muscle to achieve this new level of proof.

The small innovator stands almost no chance now if they ever did - although at least a few have succeeded in the past.

To my mind if this is the best that can be achieved then the whole system should be thrown out wholesale. Rather no patents than patents that only defend the large corporates.

But of course what I think is irrelevant. What has been achieved here is EXACTLY what was intended since this is exactly why the system is the way it is.

The only reason there is ANY reform is because it was starting to hurt the big players. Thus the reforms are designed with only them in mind.

It is not hard to see how this all works...

Re:Costly discovery? (1)

jratcliffe (208809) | about 10 months ago | (#46047689)

All the more reason that we should have loser pays for all civil lawsuits in the US, as they do in the UK. If you sue someone, and lose, you're on the hook for their legal fees.

Re:Costly discovery? (0)

Anonymous Coward | about 10 months ago | (#46048131)

Then individuals would never sue corporations. Is that what you want?

Re:Costly discovery? (1)

thaylin (555395) | about 10 months ago | (#46049097)

Why would they not? If the corp loses they pay the fees... It makes sense...

Re:Costly discovery? (3, Informative)

Karzz1 (306015) | about 10 months ago | (#46047841)

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". [theage.com.au]

Re:Costly discovery? (1)

gstoddart (321705) | about 10 months ago | (#46047945)

Sorry, should have put infringing in air quotes to make that more clear that it was never really infringing in the first place.

Yawn.... (5, Insightful)

American Patent Guy (653432) | about 10 months ago | (#46047219)

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.

Re:Yawn.... (3, Insightful)

tomhath (637240) | about 10 months ago | (#46047341)

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

Re:Yawn.... (2)

NoNonAlphaCharsHere (2201864) | about 10 months ago | (#46047507)

That's just because this particular case uses negative logic. Try substituting "libel/slander" for "patent infringer":

Normal case:
Plaintiff: "He slandered me!"
Defendant: "No I didn't!"

This case:
Plaintiff: "I didn't slander him!"
Defendant: "Yes you did!"

In either case, it seems overwhelmingly logical and obvious that the burden of proof is on the person claiming they were slandered, irrespective of whether they're the plaintiff or defendant.

Re:Yawn.... (4, Informative)

Uninvited Guest (237316) | about 10 months ago | (#46047537)

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.

Re:Yawn.... (0)

Anonymous Coward | about 10 months ago | (#46048601)

The Supreme Court affirmed the traditional rule. The District Court and Court of Appeals invented some obtuse exception to the normal rule in declaratory judgment cases, thinking that patent cases were somehow special.

The burden on the plaintiff in a declaratory judgment case is to convince the judge that it's not unfair to force the defendant to prove infringement now. Normally the rights-holder has the freedom to choose when he's going to sue (which may be never). A declaratory judgment case abrogates that freedom, and so there has to be a showing of why the judge should allow that.

The lower courts for some insane reason decided that in patent cases, declaratory judgments are so unfair to the patent holder that they wanted to saddle the plaintiff with the burden of proof in that case. It's just completely stupid. Without having looked at the case at all, I'm going to guess that there was a super-majority which slapped the lower courts down. Maybe Ginsburg was a hold out, because her daughter is an IP lawyer and Ginsburg believes IP is sacrosanct.

Re:Yawn.... (1)

Anonymous Coward | about 10 months ago | (#46047565)

A plaintiff in a declaratory judgment action is really more like a defendant. A declaratory judgment action is a way for the alleged infringer to bring the issue before the court.

Re:Yawn.... (1)

alen (225700) | about 10 months ago | (#46047883)

yes, they said mirowski has to prove their patents were violated

Re:Yawn.... (2)

jbeaupre (752124) | about 10 months ago | (#46048357)

No, they ruled the patent owner always has the burden of proof. It so happens, that's the defendant. It is the "always" that was the important part of the ruling.

Until fairly recently, if you licensed a patent, you gave up the right to contest it. That changed, but there was still some grey.

In this case, the Plaintiff had licensed for one product but wanted a judgement concerning a newer product. The Defendant asserted the burden of proof was on the Plaintiff since they had licensed it and now wanted to contest it. The Supreme Court disagreed: patent owner always has the burden of proof.

Re:Yawn.... (1)

American Patent Guy (653432) | about 10 months ago | (#46049753)

Although this was a declaratory judgment action filed by the potential infringer, it would still have had to give the patent holder sufficient access to the information needed to evaluate whether or not infringement had occurred. That's true of any respondent in any civil action: the plaintiff has to lay out enough of its cards to allow the respondent to make a defense. The potential infringer here would have had to identify the products and services at risk, and give the patent holder sufficient information to argue infringement. If the patent holder did not care to show that infringement, that's his right.

I'm still yawning...

Re:Yawn.... (1)

gstoddart (321705) | about 10 months ago | (#46047461)

A plaintiff always bears the burden of proof

If that were true, would SCOTUS have been ruling on it?

That they were ruling on this to me suggests it may not have been quite so clear.

Because otherwise it wouldn't need to be decided by SCOTUS.

Re:Yawn.... (1)

thaylin (555395) | about 10 months ago | (#46047541)

Because no one ever tries to challenge facts, ever.... Also the court did not say it was perfectly clear previously, just that this is how it is, so deal with it.

Re:Yawn.... (0)

Anonymous Coward | about 10 months ago | (#46049617)

Actually, the court did say that it was perfectly clear previously. Read the ScotusBlog analysis, titled "Justices unimpressed with Federal Circuit’s mastery of federal procedure curriculum". (http://www.scotusblog.com/2014/01/opinion-analysis-justices-unimpressed-with-federal-circuits-mastery-of-federal-procedure-curriculum/)

The lower courts were completely idiotic. They decided to try to break new legal ground based on a notion that patent-holders needed to be coddled.

Re:Yawn.... (1)

American Patent Guy (653432) | about 10 months ago | (#46049603)

The caselaw shows that the CAFC is regularly corrected by the Supreme Court every few years. It's really not that big a deal.

Encouraging (2)

rujasu (3450319) | about 10 months ago | (#46047225)

This ruling on its own might only help slightly. But aside from that, I think this kind of 9-0 ruling (!) coming from the U.S. Supreme Court is encouraging for other patent-related cases that the Court will soon be hearing.

DOS Patent Trolls? (5, Interesting)

Luciano Moretti (2887109) | about 10 months ago | (#46047229)

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?

Re:DOS Patent Trolls? (2)

Todd Knarr (15451) | about 10 months ago | (#46047797)

Fairly hard. One of the requirements for asking for a declaratory judgement is that you have to either have been sued or have a reasonable fear of being sued by the patent-holder. If the patent-holder hasn't actually sued anyone yet, it's easy for them to v get DJ actions dismissed. Even if they're sued others but not sued you, traditionally it's been easy for them to argue that you don't have any reason to believe you'll be sued yet (not that that is not a promise not to sue you in the future). In this particular case Medtronic sustained their DJ because Mirowski had already put it in writing that it believed Medtronic infringed the patents, and if they do then the next step if Medtronic didn't agree would be to sue.

Re:DOS Patent Trolls? (1)

Em Adespoton (792954) | about 10 months ago | (#46048125)

Fairly hard. One of the requirements for asking for a declaratory judgement is that you have to either have been sued or have a reasonable fear of being sued by the patent-holder. If the patent-holder hasn't actually sued anyone yet, it's easy for them to v get DJ actions dismissed. Even if they're sued others but not sued you, traditionally it's been easy for them to argue that you don't have any reason to believe you'll be sued yet (not that that is not a promise not to sue you in the future). In this particular case Medtronic sustained their DJ because Mirowski had already put it in writing that it believed Medtronic infringed the patents, and if they do then the next step if Medtronic didn't agree would be to sue.

Easy solution: first step is everyone contacts the patent trolls stating "I am the author of x. It works like this. Do you have any reason to believe this infringes your patents?"

At this point, the trolls have 3 options: answer "yes" at which point it's ready for declaratory judgement, answer "no" at which point that can be used as evidence if they ever DO decide to sue (bad move for any patent troll) or not answer the question in a timely manner, which can also be used as evidence.

And if everyone did this, it would have the added benefit that the courts wouldn't be bogged down, as all the wasted time would have to happen in the troll's offices.

Please feel free to suggest improvements/rebuttals.

Re:DOS Patent Trolls? (1)

Em Adespoton (792954) | about 10 months ago | (#46048153)

Oh yes, this has the added benefit that anyone producing anything remotely in the same ballpark as the trolls' portfolios can send them a letter with that question, even if they're reasonably sure they don't infringe. And this means that the trolls can't safely auto-respond with "yes" or "no" without investigating their own claims first, as either way they can end up with an invalidated patent portfolio.

Re:DOS Patent Trolls? (1)

Todd Knarr (15451) | about 10 months ago | (#46048855)

Big practical problem: that would require you giving away all the details of your product without placing the patent troll under any legal obligation not to give them out to others. From a legal standpoint they're also not under any obligation to answer your query or evaluate your claim that you infringe, so they could just bin your letter and wait without any legal penalty. You'd have to actually make a claim against them to start any sort of clock ticking, eg. by filing to invalidate their patent on the grounds that your material is prior art. The system's currently tilted very much in favor of ambush tactics, you pretty much have to wait until they start to move before you can draw them into a trap.

Re:DOS Patent Trolls? (0)

Anonymous Coward | about 10 months ago | (#46050541)

I am pretty sure the run with your letter to the patent office and patent it. Because you didn't patent it. And because they have enough lawyers to make it stick, even if you had the patent on it.

Re:DOS Patent Trolls? (1)

Grond (15515) | about 10 months ago | (#46049577)

One of the requirements for asking for a declaratory judgement is that you have to either have been sued or have a reasonable fear of being sued by the patent-holder.

That's not the standard for declaratory judgment jurisdiction in patent cases and hasn't been since the 2007 MedImmune case, in which the Supreme Court rejected the Federal Circuit's "reasonable apprehension of suit" test. The MedImmune standard is "whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." MedImmune v. Genentech, 549 U.S. 118, 127 (2007) (quoting Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273 (1941)).

Haha wow (2, Interesting)

Anonymous Coward | about 10 months ago | (#46047259)

Cue a million companies queuing up to sue for declaratory judgement in order to force companies to show their cards instead of vague "something you do violates some part of one of our patents pay 20% of your income or be sued" threats.

Re:Haha wow (5, Informative)

fast turtle (1118037) | about 10 months ago | (#46047653)

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.

Re:Haha wow (1)

thaylin (555395) | about 10 months ago | (#46048157)

Actually MS will be able to keep the money because it was an agreement. It would be next to impossible to get more money though.

Re:Haha wow (1)

grep -v '.*' * (780312) | about 10 months ago | (#46050235)

MS is going to be out lots of money for the licenses they've charged for.

Nope -- no replacements, no refunds. Didn't you read that in the EULA when you clicked and legally agreed to everything in it?

How is this different? (0)

Anonymous Coward | about 10 months ago | (#46047305)

Isn't this the way it's always worked?

Why wasn't this already required...? (1)

Clyde Machine (1851570) | about 10 months ago | (#46047371)

Why wasn't this already required...? (Innocent until PROVEN guilty?)

Re:Why wasn't this already required...? (1)

Uninvited Guest (237316) | about 10 months ago | (#46047563)

Except in patent cases, apparently. The SCOTUS is saying that the patent holder, whether defendant or plaintiff, always has the burden to prove that the other party infringes their patent(s).

Re:Why wasn't this already required...? (2)

sjames (1099) | about 10 months ago | (#46047877)

That's because of the nature of the proceeding the ruling covers. This is a case where the (soon to be) defendant hits the (soon to be) plaintiff up for royalties, then starts rattling the saber. Then the plaintiff effectively says "put up or shut up" by taking it to court themselves for a declaratory judgement. It is the defendant who is making the positive assertion of damages in this case, so it i the defendant who has to prove it.

Re:Why wasn't this already required...? (1)

Todd Knarr (15451) | about 10 months ago | (#46048363)

Prerequisite for a declaratory judgement though is that the patent-holder has to have already made claims that you infringe sufficient to make you reasonably fear being sued by them. But sometimes the would-normally-be-the-plaintiff won't actually come out and sue, they'll just dance around and threaten without ever coming out where the defendant could defend themselves. Think a patent-holder going around to investors talking about how you will be sued and lose all your money, convincing investors to avoid you without ever laying their claims on the table where you can refute them. A DJ action's the way the defendant in that kind of situation can force the plaintiff to stop evading and either make their claims or admit they don't have any.

Note that the burden isn't entirely on the patent-holder. The party bringing the DJ action has to prove that the patent-holder's either actually threatened to sue them or has made public statements sufficient to give them good reason to believe they will be sued. You can't bring a DJ action just because you think they might sue you, you essentially have to show based on their statements and actions that a reasonable plaintiff should have already sued you.

Re:Why wasn't this already required...? (1)

v1 (525388) | about 10 months ago | (#46047989)

this is a little different because the case was filed by the defendant basically. They wanted the court to clarify their non-infringement in advance of any litigation that the patent owner may have decided to spring up at a later time.

"Innovent until proven guilty" usually only applies to the normal direction of cases, not ones that operate in reverse like this does.

I pondered this a bit to see if I could identify an easy avenue of abuse for this, but it looks pretty good. If you want to get into a market with what you believe is novel tech, but are fearful that a certain giant already in the market may sue you later down the road, you can get a judgement either for OR against, right now, before you've invested heavily. Really, it's a "win" for the new player either way. Either the court affirms they're not infringing and they can proceed to enter the market, OR the court finds they are infringing, and they can stop investing immediately or choose to license. It's a very good defensive move for the new player.

Reminds me of in wedding vows, "speak now or forever hold your peace". Prevents a big established player from sitting silent until a new startup gets invested and serious momentum and then the giant springs up out of the bushes demanding licensing fees. When they do that, it places the upstart seriously under the gun since they may have invested very heavily. At that point, licensing becomes much more attractive than walking away, as they might have decided to do if they'd have known from the start that they were infringing. So, statistically, this will end up costing patent holders, and helping people hoping to enter the market. (by keeping them out of it if it's going to end up costing them a bundle they hadn't planned on)

Re:Why wasn't this already required...? (0)

Anonymous Coward | about 10 months ago | (#46048497)

>(Innocent until PROVEN guilty?)

Yay, another American who doesn't know basic civics*. "Innocent until proven guilty" only applies to criminal cases, champ.

* and yet is still allowed to vote.

Re:Why wasn't this already required...? (1)

wv5k (771543) | about 10 months ago | (#46050183)

Civil cases don't have this burden of proof, only criminal cases do...

Say, what? (0)

jcr (53032) | about 10 months ago | (#46047515)

Isn't the burden of proof in any civil litigation always on the plaintiff?

-jcr

always, until now (1)

raymorris (2726007) | about 10 months ago | (#46047847)

Yep. If you sue someone, you have to prove your case.
Until now. Now, with this ruling, if you sue an inventor you don't have to prove anything. It's now up to the defendant to prove that the plaintiff did something wrong. This is insane.

Re:Say, what? (1)

sjames (1099) | about 10 months ago | (#46047915)

Not in this case. Here, the defendant is making the positive assertion and the plaintiff wishes to short circuit to process by having the court declare that there is not actually anything to discuss.

Re:Say, what? (0)

Anonymous Coward | about 10 months ago | (#46048507)

Isn't the burden of proof in any civil litigation always on the plaintiff?

-jcr

no. In civil (tort) cases... it has been the guilty until proven innocent. In other words I could sue you saying you copied my invention and then you would have to prove you didn't. With this ruling, I would have to prove it.

Next step after that... (1)

mrflash818 (226638) | about 10 months ago | (#46047549)

In my opinion the next step after that, should be to abolish software patents.

Re:Next step after that... (1)

ibsteve2u (1184603) | about 10 months ago | (#46047999)

In my opinion the next step after that, should be to abolish software patents.

Legal says "No - and would you like a job in the mail room better?".

Re:Next step after that... (1)

neghvar1 (1705616) | about 10 months ago | (#46048263)

Software patents need extreme reform. In their present form, It's like Tylenol patenting the concept of ingesting substance to relieve pain. The patent office would never permit that. Tylenol has to patent the specific formula of their pain reliever. This allows other companies to create a competing product that is a completely different formula but produces the same effect. Software patents should be the same. Company A's 4*5=20 should not infringe on company B's 10+10=20. Unfortunately, that is how software patents are being treated.

Re:Next step after that... (1)

game kid (805301) | about 10 months ago | (#46049623)

Better yet, just burninate the software patent countryside, salt the earth, and maybe save a prior picture of that quaint and evil practice for students to shake their heads at in disgust when they read their textbooks. Patenting math and algorithms is bad, chills software development (proprietary and especially otherwise), and only dignifies "IP" cartels like MPEG-LA.

Slashdot's over (-1)

Anonymous Coward | about 10 months ago | (#46047601)

Ad spam with sound. No reason to return to this site.

sort of annoying (1)

slashmydots (2189826) | about 10 months ago | (#46048617)

I get it for patent trolls but if it's a legit ripoff of a patent of mine now I have to play P.I. and break into their office and interview people and steal papers and hide recording devices? Because otherwise good luck finding proof from a tightly locked down company giving you the runaround. They won't hand over so much as a blueprint without a court order.

Re:sort of annoying (1)

thaylin (555395) | about 10 months ago | (#46050335)

Well you could just not claim that they are infringing unless you know for a fact they are infringing, that is why this verdict came down. If you dont make the claim they cannot file for a judgement.

Wow, this is pretty bad. (1)

Artagel (114272) | about 10 months ago | (#46050097)

This is almost as bad as listening to lawyers talk about software.

Load More Comments
Slashdot Login

Need an Account?

Forgot your password?