Yesterday, the United States Supreme Court held that the University and Small Business Patent Procedures Act of 1980 (the Bayh-Dole Act) does not automatically vest title to federally funded inventions in the federal contractor. Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc., 563 U.S. __ (2011).
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As patent practioners well know, and Applicants are often, albeit begrudgingly, forced to accept, Patent Examiner’s exhibit considerable latitude when it comes to rejecting patent claims as obvious under 35 U.S.C. §103. A recent opinion of the U.S. Court of Appeals for the Federal Circuit, In re Klein, should provide greater leavarage for practitioners and Applicants faced with obviousness rejections in the future, particularly when there is a question as to whether a reference cited by an Examiner is analogous prior art.
In a unanimous decision delivered by Justice Sonia Sotomayor, the Supreme Court held that an invalidity defense must be proven by “clear and convincing evidence,” likely ending Microsoft’s efforts to avoid a $200 million plus damages award.