While waiting my turn in line at a Starbucks in Southern California recently, I was eyeing the holiday-oriented merchandise that the coffee shop had on display.  Although snowflake-adorned coffee mugs for sale in semi-tropical locations are always diverting, I was actually more interested in a piece of equipment that Starbucks was selling:  a single-cup coffee machine.  Was it a Keurig?  No.  Did it use Keurig pods?  No (it used pods that were smaller, but otherwise virtually identical to Keurig pods).  At first glance, did it appear to improve upon or “design around” the now famous Keurig coffee machine?  Not really.

A criminal defendant cannot avoid criminal liability by arranging for others to complete a crime on his behalf, so why should a civil defendant be able to avoid liability for inducing patent infringement by arranging for others to engage in a series of steps that collectively practice the claims of a method patent?[1] According to the United States Court of Appeals for the Federal Circuit, the civil defendant should not escape such liability, and a contrary rule is capable of illogically rewarding the most calculated of plans to infringe the intellectual property of others.

In Sciele Pharma Inc. v. Andrx Corp., the Federal Circuit added some needed clarity to the concept of the “presumption of validity” in patent law, and did so in a way that may be helpful to accused infringers who are arguing that the prior art (technology already disclosed in a patent or in the public domain) renders a patent invalid.

The presumption of validity of a patent places the burden of proving invalidity, which the Supreme Court in Microsoft v. i4i recently defined succinctly as proving “that the patent never should have issued in the first place,” on the accused infringer.  By the time a patent is in litigation, the validity of the patent’s claims has already been upheld by a patent examiner at the U.S. Patent & Trademark Office (the PTO).  As the Supreme Court noted in Microsoft, the basis for the presumption, and for the shifting of the burden of proof — and for the heightened standard of proof imposed on the accused infringer (“clear and convincing”) by caselaw — is “the basic proposition that a government agency such as the [PTO] was presumed to do its job.”