So, to give your business an “edge,” you invested in a team of innovative professional engineers and scientists. It paid off: you developed and perfected advanced technologies, as compared to your competitors. But, now they seem to have adopted your technologies to compete with you. However, you took the precaution to obtain patent rights. Now… Read more »
Posts By: Shaukat Karjeker
The Inter Partes Review (“IPR”) proceeding, part of the America Invents Act, sets up a streamlined procedure for any party (“petitioner”) to challenge the validity of the claims of an issued patent, not in a court, but in the US Patent Office, generally at a much lower cost when compared to federal court. An IPR… Read more »
While non-patent lawyers might wonder why there is such a fuss about the word “around,” the meaning of what appears to be a common term is a “big deal” in determining the scope of patent claims, and whether a patent that was subjected to the dreaded Inter Partes Review proceeding has valid claims. By way… Read more »
Plaintiffs in patent cases are entitled to damages stretching back six years from the date of filing the suit for patent infringement under the Patent Statute, 35 USC § 286 — unless these were barred by laches. This has been the law for over 20 years, since at least Aukerman, which held that the defense… Read more »
The Supreme Court unanimously found that a Minute Maid juice product of The Coca-Cola Company, labeled in large type as “Pomegranate Blueberry,” and depicting a pomegranate and blueberries prominently on the package, but containing only about 0.5% of these juices, is deceptively labeled. While that might appear to be a “common sense” judgment based on… Read more »
In a patent suit involving a patent covering an elliptical trainer exercise machine, the US Supreme Court significantly changed a long-established standard for awarding attorney fees to the prevailing party. Under the old standard, the trial court had the discretion to order the losing party to pay the prevailing party’s attorney fees if it found… Read more »
Have you ever taken someone to court, based on ongoing offending activities of that person, won the case, and then found he/she was once again engaging in “the same” offensive activity? If so, you are probably aware that a Court Order is enforceable through a “Contempt Action” to prevent the person from engaging in the… Read more »
When people talk about patents, they generally mean a “utility patent.” To date, over 8 million utility patents have issued in the United States. In contrast, only about 680,000 design patents have ever issued. Why that discrepancy? It’s hard to fathom, especially after Apple Corp. recently won a $1.05 billion jury verdict for design patent… Read more »
by Shaukat A. Karjeker
In the race to map the human genome, many of the organizations involved obtained patents on gene sequences that they identified. These patents were granted regardless of whether the applicant had determined any role or function of the sequence. As a consequence, other researchers were effectively “blocked out” of research and development on the patented DNA sequences, unless they were able to negotiate a license.
The unanimous opinion by Hon. J. Clarence Thomas, in Association for Molecular Pathology, et al v. Myriad Genetics, Inc., et al. completely changes the biotech and medical research landscape: DNA is a naturally-occurring composition and therefore not patentable. With a single stroke, the Court has opened the flood gates for the development of customized gene-based medicine. All issued patent claims to DNA sequences are now invalid, the DNA sequences are effectively “in the public domain,” and the sequences may be used in research and development without any need for (costly) licenses.
By Shaukat A. Karjeker
Depending upon where you stand, on June 14, 2012, the Federal Circuit Court of Appeals either executed a “bloodless” coup d’état, or brought order to the issue of enhanced damages in patent cases. In Bard Peripheral Vascular, Inc. et al. v. W. L. Gore and Associates, Inc. ((Bard Peripheral Vascular, Inc. v. W. L. Gore & Associates, Inc., No. 03-CV-0597, slip op (Fed. Cir. June 14, 2012); 2012 LEXIS 13561. Bard has been followed in several cases, including: Highmark, Inc. v. Allcare Health Mgmt. Sys., (Fed Cir 2012), 701 F.3d 1351; 2012 U.S. App. LEXIS 25054; Sargent Mfg. Co. v. Cal-Royal Prods., (D Con), 2012 U.S. Dist. LEXIS 105260; Tomita Techs. United States, LLC v. Nintendo Co., (SD NY), 2013 U.S. Dist. LEXIS 8111; and Carnegie Mellon Univ. v. Marvell Tech. Group, LTD., (WD Pa), 2012 U.S. Dist. LEXIS 157337 (noting that mixed questions of law and fact may be resolved by submitting special interrogatories to the jury on fact issues).)), the court ruled that the preliminary determination of “willfulness,” a sine qua non for enhancement of damages, is a matter of law for the court to determine, and subject to de novo review on appeal. This takes the issue out of the hands of the jury and places both the determination of willfulness as well as the enhancement of damages in the hands of the trial judge. Since judicial interpretation of statutes is retrospective, Bard applies to all ongoing litigation ((Voda v. Cordis Corp., 536 F.3d 1311 (Fed. Cir. 2008); 2008 LEXIS 17542.)).