Supreme Court Clears Patent Invalidity Suits

The Empiricist writes "The United States Supreme Court has cleared the way for entities to sue over the validity of a patent — even while paying user fees to the patent holder. The eight-to-one Medimmune v. Genetech decision, written by Justice Scalia, held that by paying royalties to a patent holder, one does not necessarily waive the right to challenge the validity of the patent."

Re:Good

[s20451]

yet we hardly see anyone but patent trolls and megacorps doing anything with patents, so anything which weakens them is for the best.

That's because patents only make the news when you get sued. I take it that you are not an inventor. Much of the value of a startup technology company is contained in its patent portfolio, and that portfolio is what makes it attractive for purchase by larger companies.

If you're just a lone inventor and you have that good an idea, you're probably better off making a prototype and marketing the idea directly, anyhow, rather than getting patents.

There's no reason why you can't do both. In fact, if you don't do both, you're an idiot who is taking unnecessary risks on behalf of your investors.

Applicable to SCO?

[Tmack]

I wonder if this would open the flood gates to all those that purchased the "Linux license" from SCO (for the low low introductory price of $900) to sue SCO for return of their fee once these last death throws in court are over with, if theres anything left of SCO? Basically the license was to cover royalties on the patents that Linux supposedly infringed that SCO "owned", and as these patents and other IP that SCO claims to own and claims is in Linux are being laughed out of court I would think this would make reclaiming the fee from SCO easier..

tm

Re:Good

[Omnifarious]

I suspect that this is an error, and that the real value lies in the expertise and ability of the lone inventor or small company to create the technology in question. It's really interesting how business shies away from valuing people and expertise over some sort of even very nebulous, intangible and somewhat imaginary asset. I think there are some powerful blinders in operation somewhere.

This solves a nasty "Catch 22"

[Anonymous Coward]

Before this decision, if you wanted to challenge a patent, you had to violate the patent. That would expose you to triple damages because you obviously knew the patent existed. Also, patent holders get almost automatic injunctions. That means the court slaps you with an order that you can't sell your product. That's how RIM ended up paying $600 million to NTP even though the patent office was about to pitch out NTP's patents as bogus.

The patent system has problems but this decision seems to solve one of them.

Re:One would hope...

[Dr. Donuts]

Yes, you could refuse to license to a company beforehand if you believe they will sue to invalidate. However, if they are successful in invalidating your patent, then your patent has no value and you've gained nothing. If you revoke a license after a lawsuit is initiated and your patent is invalidated, then you've gained nothing.

If your license is not invalidated, then the invalidation suit raises questions as to whether a company knowingly violated a patent. If you come to me demanding a license, I don't agree because I believe your patent is invalid and sue to invalidate, then the "knowingly" part of treble damages comes into suspect. The simply act of notifying a person/company they are in patent violation wouldn't be enough. Only after the failure of an invalidation suit and you *still* violate the patent could you be reasonably held to be "knowingly" violating the patent.

I suspect that we'll see companies filing lawsuits to invalidate patents just to avoid paying the treble damages in the event they are unsuccessful in overturning a patent.