Thursday, March 30, 2006

Legal Times on eBay oral arguments

The Legal Times discussion of the eBay oral argument began with a discussion of the lawyers:

Two veterans of the Supreme Court bar argued forcefully -- and inconclusively -- Wednesday in a high-stakes dispute over how easy it should be for a patent holder to win an injunction against an infringer.

From the tenor of the questioning in eBay v. MercExchange, justices seemed closely divided over the issue, alternately sympathetic toward Sidley Austin's Carter Phillips, arguing his 49th case at the Court, and then toward his adversary, WilmerHale's Seth Waxman, appearing before the high court for the 47th time.

Legal Times talked about Continental Paper: Under a 1908 precedent, Continental Paper Bag Co. v. Eastern Paper Bag Co., there is a legal presumption in favor of an injunction against the infringer although that's probably not why the Supreme Court asked for briefing on Continental Paper.

Legal Times concluded: One problem on the horizon for the case before the Court, noted several times by Roberts, is the fact that on review, the Patent and Trademark Office has invalidated all of MercExchange's patents involved in the case.

Waxman said that determination was not final and should not prevent the Court from ruling in the case.

An Office Action in re-examination rejecting claims does not "invalidate patents."

More importantly, from a substantive point of view, is that the Office Action rejecting claims was over the SAME prior art considered by the district court and by the CAFC, BOTH of which courts did NOT consider this art to invalidate the claims. See Intellectual Property Today, page 5, Feb. 2006. That might have been the stronger argument to make to the Supreme Court.

The Roberts comment has produced a a flurry of confusion.

**Along this line, tmcnet had a good discussion of the case, including this text about the re-examination.

Chief Justice John G. Roberts Jr. challenged Waxman, noting that since the lawsuit began, the Patent Office has rejected MercExchange's patent claims. Can the district court take that into account? Roberts asked.

Waxman said allowing parties to file for review after litigating cases in court would be an "open invitation" to manipulations of the patent process by infringers like eBay.

What is NOT mentioned here is
--> the re-exam began AFTER eBay lost at trial
--> the re-exam involved the SAME art over which eBay lost at trial
--> the CAFC affirmed the non-invalidating nature of the art BEFORE the USPTO mailed the Office Action. (refer to Intellectual Property Today, p. 5 (Feb. 2006)


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