Page 22 - RWU Law / Issue#4 Fall 2012

Fall 2012
part because the government picks up the
tab for enforcing the ITC’s order barring
imports, and lastly, in part because the
individuals deciding the cases and advising
on the decisions see a lot more patent cases
than a typical district court judge,” Cass
says. “The ITC decides about one-sixth of all
U.S. patent trials, while the rest are spread
across almost 90 courts and 700 judges.”
If you win at the ITC, you cannot
claim monetary damages as you could
in district court, but you can stop your
competitor from importing the offending
goods into the U.S. Even better, the federal
government will assist in enforcing this
decision at the borders.
That’s a very attractive thing if you’re
a patent owner,” Schweibenz says. “That’s
just one of the reasons why there’s been an
explosion in the number of cases filed at
the ITC in the last few years.” If you’re an
infringer, on the other hand, “it can be a
very scary thing.”
The ITC has limited jurisdiction
outside the U.S., Schweibenz says. But
since virtually all electronics products sold
here are produced abroad, even if they are
branded by a U.S. company, the ability
to stop them at the border is a powerful
potential weapon for companies trying to
gain an advantage. Even a brief delay in
a competitor’s entry into the market can
have a huge impact – because once eager
consumers buy a device, they tend to stick
with it. The manufacturers, meanwhile,
continue to profit when users buy future
upgrades and content.
The U.S. patent system generally works
well,” notes Cass, whose new book, “Laws
of Creation: Property Rights in the World
of Ideas,” will be published by Harvard
University Press this fall. “We have lots
of innovation and an economy that is
increasingly composed of businesses that
are intensive users of intellectual property.
But some corners of the system clearly are
far from ideal. That’s especially true when
you look at contests over smartphones
and other mobile devices, which turn out
to be collections of tens of thousands (or
even hundreds of thousands) of patented
components and methods of operations –
every one of which is a potential basis for
stopping the product’s sales in the U.S.”
Infringing or Invalid?
The issues that these huge companies
bring to court can turn on the tiniest
details. Every minor function and feature
and swipe is subject to argument. Apple,
for example, has argued that its iPhone
patents entitle it to protect a rectangular
shape with rounded corners and a flat black
screen. The companies who defend against
these cases generally choose one of two
primary defenses, Schweibenz says – either
non-infringement or invalidity.
The strongest defense, if available, is
non-infringement,” he says, but it can be
difficult to prove. Essentially, that would
require convincing the court that the accused
products are not covered by the claims of the
complainant’s patents. But the standard that
the parties need to meet, for infringement
or non-infringement, is just a “51 percent
standard” – or the preponderance of
evidence, Schweibenz says.
The other defense generally asserted
by accused infringers is invalidity, which
comes in two “flavors,” Schweibenz says –
anticipation or obviousness.
Anticipation is typically easier to
prove,” he says. “It means someone else
invented it first, coming up with the
same ideas that you had at least one year
before you filed your patent application.
Now, while the patent office is supposed
to search for prior art patents and printed
publications when you go through the
patent application process, they have
limited resources and thus they have
trouble looking at every single thing. So
the patent lawyer will try to distinguish
their new technology from the old
technology. It’s the court’s job, however,
to resolve these conflicts if they are raised
during litigation.”
It’s more challenging to prevail with the
second “flavor” of invalidity, obviousness.
You would need to find multiple prior art
references to prior technology that, when
you combine them, are essentially the
same as the new technology,” Schweibenz
says. In either case, the evidence to prove
invalidity must be “clear and convincing,”
he says, a very high burden of proof,
It’s a very exciting area of
law to be involved in. This
stuff is going to continue
to explode.”
Eric Schweibenz ’98