Thank you for contributing your excellent analysis of the precedential weight of CLS Bank, Professor Chao. My guess (and I mean my unresearched guess) is that the Supreme Court does not consider Marks to be binding on the circuit courts for how they should determine the binding force, if any, of a decision when no single rationale commands majority support. I suspect that the Supreme Court would consider this to be an internal procedural matter for circuit courts to decide for themselves. I think it's much like the Federal Circuit's decision, in its infancy, to adopt decisions of the United States Court of Customs and Patent Appeals as binding precedent. The 11th Circuit did the same thing with regard to 5th Circuit cases prior to the creation of the 11th Circuit.

What became abundantly clear at oral argument was that TR Labs readily concedes, and has conceded for some time, that Cisco is not an infringer under 271. Not directly, not as an inducer, and not as a contributory infringer. Cisco had no reason to believe it would ever face liability for infringement of the patents at issue. This was all about Cisco's customers, and the allegedly infringing uses to which they put Cisco's products -- products that TR Labs concedes have substantial non-infringing uses. I'm guessing there are Cisco customers that would be more than happy to let Cisco assume the defense costs and potential liability of taking on a fight against TR Labs. I doubt, though, that Cisco wants to indemnify for potential customer infringement liability. But that's what Cisco will have to do if it wants to have a federal court resolve these validity and infringement issues. Because, Cisco, this is a case and controversy between TR Labs and your customers, not you. It'd be nice for marketing purposes to have a clean shot at the validity of the patents at issue without fear of infringement liability, but the federal courts' jurisdiction is limited to cases where parties have skin in the game.

It's a good analogy, Dennis, and it's disheartening to see that important decisions like this are essentially purchased with lobbying money. Lots of lobbying money.

Yes, as JMD mentioned, it looks like Todd Hughes will be confirmed in September. He was voted out of Judiciary, so there does not appear to be anything standing between him and the bench. Except for Senate gridlock, that is, and that's always a possibility.

It seems to me on my first reading of this decision that the strength or weakness of the generic's invalidity/non-infringement position would be a very big factor in the FTC's case-in-chief. We don't need to have these issues resolved in patent litigation -- they can be indirectly addressed in the FTC's antitrust case. If, for example, there were killer positions settled away regarding validity/enforceability/infringement, the FTC has gone a long way towards showing how the megabucks reverse settlement was really a division of a monopoly pie that should never have been baked. Conversely, if the generic's arguments in the patent case were weak, that would cut the other way.

This might be the first time I've found myself agreeing with Justice Breyer on a question of patent law. The presumption of patent validity is good policy, but it shouldn't become a conclusive presumption in the context of antitrust law. If the patent is invalid or not infringed, the brand-name and generic pharmas are making horizontal, anti-competitive agreements to exclude when there was no legitimate right to exclude in the first place.

Please let me know when you're man or woman enough to sign your real name to the ideas you express online.

anon, here's why your anonymous post means diddly and why what the Court decided in this case means a ton with regard to the risk these plaintiffs will ever be sued by Monsanto for inadvertent infringement. The Federal Circuit would go ape sheist on Monsanto if it were ever to sue one of these plaintiffs for inadvertent infringement. That would be an affront to the Court, and I challenge you to find any company that depends more for its profitability on a single court like Monsanto depends on the U.S. Court of Appeals for the Federal Circuit. To be clear, I'm not weighing in at all on Monsanto's positions in this or any other patent case. I observe only that Monsanto would be nuts to test the limits of the estoppel it set up in this case.

anon, if we were to place a bet on whether, down the road, Monsanto sues any of these plaintiffs for de minimis infringement, what odds would you give me? I would not be at all surprised if one of these plaintiffs makes a deliberate, direct challenge to a Monsanto patent. But I'd be amazed if Monsanto ever sues one of these plaintiffs over what was blowin' in the wind.

No, I am disagreeing with your "slightest change in facts" point. That suggests to me that Monsanto might test the edges of the litigation policy it submitted in this case in support of its motion to dismiss. You are correct that Monsanto could sue these plaintiffs down the road, but I submit that to do so would be insane for Monsanto. It would make no sense. Monsanto is not insane, nor does it do things that are obviously contrary to its self-interests.

Monsanto would be insane to dance around the edges of its estoppel with these plaintiffs. There would be virtually no upside and a mountain of ill will downside from the Federal Circuit and the trial court in this case.

Paternalistic? What the Court did was set up an ironclad judicial estoppel defense for the plaintiffs should Monsanto ever deviate from the position in took in this case in order to win dismissal.

Jr., do you have a particular case in mind that fits this description -- farmer sued for nothing more than inadvertently growing Monsanto seeds? Maybe I misread it, but the opinion suggested to me that there hasn't been such a case.

A sua sponte broadening of a claim on appeal? I've never heard of such a thing -- have you? Unless the appellant seeks a broader construction, or a construction different in some way that raises new validity issues, then I don't think a contingent cross-appeal on invalidity is necessary.

I can't think of any at this point. The issue of validity was decided against Photoscribe, and it didn't conditionally cross-appeal that adverse decision. Sometimes a litigant discovers that its role in a case is to serve as a warning to others.

I wouldn't call it malpractice not to file the conditional cross-appeal. For all we know, the Federal Circuit might have flatly rejected the accused infringer's invalidity arguments in a cross-appeal. With the benefit of hindsight, though, not filing it looks like a strategic error.

Sorry -- I meant to say that the case on validity ends right there with the first appeal. With possibility 2), the whole case ends.

I think it is judicial economy. With the conditional cross-appeal re validity on file, there are three possibilities after the Federal Circuit broadens the claim: 1) the accused infringer's basis for invalidity fails as a matter of law, 2) the record shows invalidity as a matter of law and 3) additional fact-finding is necessary to resolve validity under the broadened claim. With the first two possibilities, the case ends right there with the first appeal. If we don't apply the cross-appeal rule, however, the first two possibilities result in a remand and maybe another year or two of litigation for the parties.

"... and at the same time denying a directly affected member of the public the opportunity to challenge the validity of the broader claim in court." That directly affected member of the public denied itself the opportunity to challenge the validity of the more broadly construed claim. All it had to do was file a contingent cross-appeal arguing that assuming, arguendo, the broader construction is correct, then such a claim would be invalid for reasons X, Y & Z.

That "new invalidity attack" with the broader claim construction should commence in the first appeal. Then the Federal Circuit, having broadened the claim, can consider whether a remand is necessary on validity, or if the record shows that the issue can be resolved as a matter of law one way or the other.

Judge Dyk makes some persuasive points, but I thought Deanne Maynard, on behalf of Lazare Kaplan, had the better argument. Her point was that reversal of a claim construction is hardly an extraordinary event at the Federal Circuit (we all know that too well). Once Lazare Kaplan set forth in its opening brief (of the first appeal) what it contended was the correct construction, Photoscribe was on notice that the Court might agree with that broader construction. That's when the appellee needs to go into contingency-planning mode; that planning here should have included a contingent cross-appeal, written with the assumption that the Court will agree with the appellant's broader construction.

There were some pretty ominous comments from the bench at oral argument to appellant's counsel about how he might win this appeal, given the very liberal pleading standard, but he might face a Rule 11 problem down the road.

I was about to say the same thing. Even if there is a plausible defense for ceasing royalty payments for Judge Duvall's widow, is that the right thing to do? Pretty bad PR, it seems to me.

Whoa, wait a minute -- wasn't there some deal struck back when the AIA was held up at House Budget related to diversion? I thought there were assurances that this sort of thing would not happen.

A patent law professor intent on teaching how easily the utility requirement is met might use this patent to illustrate how that hurdle is half an inch high.