Historically, the U.S. Supreme Court granted certiorari in a patent case once every blue moon. Now, things are different. The Roberts Court has taken a keen interest in patent cases and recently granted cert in three, choosing to address (and perhaps change) long-standing principles adopted by the U.S. Court of Appeals for the Federal Circuit. The issues presented include a challenge to (1) the circumstance under which (or whether) individual inventors or contractors retain patent rights to federally funded inventions; (2) the “state of mind” element required to establish indirect infringement, and specifically active inducement; and (3) the clear and convincing standard of proof required to invalidate patents. This article addresses all three cases being briefed on appeal.
Federal Funding
The earliest case (based on when the Federal Court ruled) is Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems Inc., et al., 583 F.3d 832 (Fed. Cir. 2009) (rehearing and rehearing en banc denied Dec. 22, 2009). There, the Federal Circuit found for defendant Roche, and Stanford petitioned the Supreme Court. Although the parties debate the exact wording of the issue presented on appeal, the Supreme Court in essence granted cert to address the Bayh-Dole Act, 35 U.S.C. §§200-212, and how that act governs the relationship between a private university that receives government funding and its inventors and assignees. Stanford, the petitioner, posed the question as follows:
