California Patent Attorney® Blog

January 2013 Archives

Supreme Court to Rule if Planting Patented Seeds Constitutes Infringement

January 21, 2013,

seedling.jpgCalifornia - Monsanto Co. asked the United States Supreme Court to uphold a ruling that a farmer infringed its Roundup Ready soybean seed patent when he planted the seeds, arguing that if it ruled otherwise it would undercut patent rights for products that can easily be reproduced.

In the brief Monsanto filed prior to the oral arguments scheduled for February 19, Monsanto asked that the court should dismiss Vernon Bowman's argument that Monsanto's patent rights were exhausted when the company allowed the seeds to be sold. Monsanto argues that the Federal Circuit ruled correctly when it said Bowman infringed its patent rights by planting the seeds he purchased and creating more of the patented seeds.

Monsanto argued that the doctrine of patent exhaustion states that the patent owner loses the right to control its patented product after an authorized sale, but the doctrine only covers the actual product sold.

In its brief to the court, Monsanto stated that the doctrine of patent exhaustion "cannot apply to other articles, such as the new soybeans petitioner grew, that have never been sold. Monsanto's patent rights in those soybeans were thus not exhausted."

Patent law does not allow a consumer who has purchased a patented item to recreate the product based on the template of the original, and Monsanto argues that just because seeds are grown instead of manufactured does not mean it should not have the same patent rights.

Monsanto also argued that if the court holds that Monsanto's patent rights in the seeds were exhausted, it would take away the incentive to undergo the expensive process of developing products that can be easily replicated because there would be little patent protection.

Inventors "would find it impossible to maintain the exclusivity conferred by the patent laws the moment he commercialized the invention: Every sale would create a new potential competitor with rights to make, use and sell new copies of the invention," Monsanto said.

Bowman argues that the Federal Circuit's finding that he is liable for infringement for planting seeds creates an exception for self-replicating patented products in the doctrine of exhaustion giving those products an unprecedented level of patent protection, which he claims should not be allowed.

Apple Unable to Secure Permanent Injunction on Samsung Devices

January 3, 2013,

apple-store.jpgCalifornia - A California federal judge rejected Apple's request for a United States sales ban on a number of smartphones made by Samsung Electronics Co Ltd. that were found to infringe Apple's patents and trade dress.

Just before the holidays U.S. District Judge Lucy Koh said Apple was unable to establish that the patented features in question are features that drive sales of the iPhone, thus Apple was unable to prove the company would suffer irreparable harm because of Samsung's sale of the infringing products.

Apple requested the injunction, which would have removed 26 of Samsung's current and future products from store shelves during the heart of the holiday season, after a California jury ruled in August that Samsung had infringed six utility and design patents which Apple owns.

Apple wanted the injunction in order to force Samsung to overhaul its product lines and to give Apple a piece of the popular Galaxy S II's sales, which would have made the injunction more valuable to Apple than the $1.05 billion it was awarded by the San Francisco jury.

Apple argued that the patents Samsung is infringing cover features of the iPhone design, including its black color, metal edges, reinforced glass and glossiness, which it argued are important to consumers when purchasing a smartphone. However, Judge Koh said the entire design of the phone, not the isolated characteristics Apple pointed out, is what is protected by its patent.

Judge Koh also said it is unclear how much a consumer considers design when making a smartphone purchase. Even if it was clear that design played a large part in a consumer's decision-making, Apple did not provide evidence that the specific design features Samsung was found to have infringed actually influence a consumer's decision to purchase a specific smartphone.

"Apple makes no attempt to prove that any more specific element of the iPhone's design, let alone one covered by one of Apple's design patents, actually drives consumer demand," Judge Koh said.

In addition to denying Apple's bid for a permanent injunction, Judge Koh also denied Samsung's request for a new trial.

Samsung claimed that juror Velvin Hogan withheld information during the voir dire process regarding his involvement in litigation with Seagate Technology PLC, a company Samsung recently invested in. Judge Koh dismissed the request saying Samsung waived its arguments during the voir dire process.