Tuesday, June 9, 2009

Bilksi and Quanta Warrant Amendment of Pleadings to Assert New Defenses

Defendant was permitted to amend its pleadings eight years into the litigation where the bases for defendant's newly asserted defenses were the recent decisions of In re Bilski, 545 F.3d 943, 959–60 (Fed. Cir. 2008) and Quanta Computer, Inc. v. LG Elecs., Inc., 128 S. Ct. 2109, 2120–22 (2008).

Bilski: "The long-term impact of Bilski is yet unknown, in particular as a petition for certiorari was filed on January 28, 2009 and has since been granted. However, at this juncture the Court takes Bilski as prescribing the only test for validity of patent-eligible process claims and accordingly [defendant] should be permitted to add the defense of invalidity of the patents under the Bilski machine-or-transformation test."

Quanta: "The Supreme Court in Quanta reversed the Federal Circuit to hold that the doctrine of patent exhaustion applies to method patents and that when a license authorizes the sale of components that 'substantially embody the patents in suit,' that sale exhausts the patents. . . . [Defendant] rightly brings this case to the Plaintiff’s attention as well as that of the Court as Quanta expresses a new ruling on method patents, and method patents are presently before the Court."

Research Corp v. Microsoft Corp., 4-01-cv-00658
(AZD June 5, 2009, Order) (Clive, J.).

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