Value Added

Value Added

The IP Law Outline
, with its 30-page Detailed Table of Contents, is a quick, at-a-glance research tool to consult first for finding the relevant case law and issues to craft winning arguments for your patent case -- and be able to anticipate your opponent’s arguments. 

The IP Law Outline adds value to your case in a number of ways, enabling you to:

  1. Predict the outcome of your case; 

  2. Easily determine the issues, formulate your arguments, and anticipate your opponent's arguments; 

  3. Help ensure that you have the relevant case law for your case, including the most current case law which The IP Law Outline highlights in red for easy comparison with the court’s earlier case law; and
  4. See and learn from the listings of cases from the past decade the extent of the Federal Circuit’s development of the issues.


Predicting the Outcome of your Case

As one example, I used the The IP Law Outline to predict successfully the outcome of the U.S. Supreme Court’s decision in Microsoft v. i4i, 6/9/11, in which Microsoft argued for a lower preponderance standard for proving patent invalidity when based on prior art not considered by the PTO.  I wrote and published online an article in January 2011, which I based on the case law in The IP Law Outline relating to the deference owed to the PTO, and the difficulty of proving invalidity with prior art considered by the PTO during prosecution.  In the article, I also cited the Group One (Fed. Cir. 2005) case, in which the court ruled that the burden of proving invalidity (under the clear and convincing standard) is easier with prior art not considered by the examiner.  Compare the highlighted portions at the end of my article [click here] with the Court’s opinion (in Section II B) responding to Microsoft’s argument above [click here].  I note that none of the briefs I reviewed cited the Group One case, and neither the IBM amicus brief nor the Mendenhall case cited by the Court includes in the respective jury instructions the detail (“materially new” or “sufficiently different”) contained in the opinion and my article.

As another example, the Federal Circuit in the leading case of Robert Bosch LLC v. Pylon Mfg. Corp., 10/13/11 (Judges O’Malley, Reyna, and Bryson, dissenting) reversed the district court’s denial of a permanent injunction as an abuse of discretion, because the Federal Circuit ruled that the patentee was entitled in view of the record to an injunction based on the eBay (S.C.) factors, particularly the irreparable harm factor.  The court also held “putting to rest the question” that the “presumption of irreparable harm” used by the district courts after finding infringement of a valid patent was discarded by eBay.  Judge Bryson, in dissent, disagreed with granting an injunction on appeal, rather than remanding to the district court to make fact findings regarding the eBay factors in the first instance.  Compare the highlighted excerpts from the court’s opinion [click here] with the “Preliminary Injunctions” and “Permanent Injunctions” sections of The IP Law Outline, as published on September 18, 2011 [click here], and you will see how the law and issues summarized in The IP Law Outline appear to have provided the outline for the court’s opinion, in which the court also applied its precedent relating to preliminary injunctions in a case involving a permanent injunction.  Notice in particular the two nonprecedential cases (Automated Merchandising Systems, 12/16/09, and Canon, 1/25/08) included in the “Preliminary Injunctions” section which are also cited in the opinion.

                              

You may contact Michael Sullivan at mgs@iplawoutline.com.