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Patent Filers: No More Swearing

By Yon S. Sohn, as featured in The Texas Lawbook New Year’s resolutions are made to be broken. But on March 16, the America Invents Act (AIA) will come to aid inventors and corporate R&D departments to keep their resolution to not swear anymore. Of course, we are not talking about profanity but rather the practice known as “swearing behind” or antedating the date of invention when procuring a U.S. patent. But first, let us cover a little background before further discussing this no-more-swearing law.

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Willfulness? Enhanced Damages? It’s a Judge-ment Call

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…

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Use Unlicensed Music in Wedding Films at Your Peril

by Vincent J. Allen Quantum leaps have been made in both the quality and popularity of wedding films over the past 10 years. The advances are a result of technology improvements in post-production editing systems and the introduction of low profile cameras that rival the production quality of movie sets. Most recently, the availability of relatively low cost DSLR cameras has added a cinematic element to event film productions that previously was not available. Event filmmakers have begun creating works of art that capture the emotions of the wedding day. So it is no surprise that wedding films are often set to music selected to create the desired mood. Historically, event filmmakers have not given much thought to obtaining permission to use a popular song in a wedding film, and some have even operated under the erroneous belief that purchasing the song on a CD or iTunes will avoid a…

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USPTO Announces Dallas Satellite Office Location

By Yon S. Sohn Today, the U.S. Patent and Trademark Office (USPTO) announced the site of its Dallas Regional Satellite Office. (See the official press release here.) It is to be located in the Terminal Annex Federal Building on Houston Street, south of the Dealey Plaza, and it will be in the heart of the Dallas’s legal epicenter with George Allen Courthouse as its next-door neighbor.

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Aon & RPX Unveil Non-Practicing Entity Patent Litigation Insurance Coverage

by Vincent J. Allen It is becoming more and more common for technology business owners to be faced with patent infringement suits filed by a non-practicing entity (NPE), an entity that does not manufacture or sell the product covered by the patent.  Defending a patent infringement suit can be very expensive, and for a small company, can threaten its very existence.  Historically, patent litigation insurance has not been readily available.  But now, patent aggregator RPX and insurance company Aon Risk Solutions have teamed up to offer patent litigation insurance for suits brought by non-practicing entities

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Implications of New First-To-File Rule

By James R. Gourley The patent regime of the United States was set up by Congress to enable innovators to protect their ideas through monopoly ownership for a limited period of time. Because there are almost always many different individuals and groups working on solutions to problems that exist in the marketplace, it is not uncommon for several different people to independently arrive at the solution around the same time. In this scenario, under the “first-to-invent” system currently used by the United States, the patent monopoly will generally be granted to the first inventor, even if a later inventor was the first inventor to file a patent application. Such an outcome is unique to the United States, as every other industrialized country uses a “first-to-file” system in which the patent monopoly is awarded to the first inventor to file.

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Procedures for Opposing Issuance of Patents

By Yon S. Sohn One of the new features of the AIA is the Post-Grant Review (PGR), often referred to as a third-party opposition. PGR allows any party to challenge any new or reissue patent. Starting with patents issued having a filing date on or after March 16, 2013, an opposer will have a nine-month window to submit to the Director of the Patent Office a petition to cancel one or more claims on the basis of invalidity. Compared to ex parte or inter partes reexaminations previously available, PGR allows a broader scope of information to be used as evidence, including patents, printed publications, commercial sales, and public use.

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Prior Commercial Use Defense

By Vincent J. Allen The America Invents Act significantly expands the “prior commercial use” defense for patent infringement cases.  The defense allows a defendant to avoid patent infringement by proving that the defendant used the patented subject matter at least one year before the earlier of a) the effective filing date of the patent-in-suit or b) the date the invention was disclosed to the public as envisioned under the new Section 102(b).  The defense previously only applied to business methods, but now includes the entire gamut of patentable subject matter.

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Need for Speed? – Think Prioritized Examination

By Bobby W. Braxton If asked how quickly would you like obtain a patent, most inventors would reply “now.”  Unfortunately, due to a large back-log at the USPTO, applications often wait two or more years before they are even examined by an Examiner. The America Invents Act now provides for Prioritized Examination (“P.E.”), which can significantly reduce the wait.

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AIA Rolls Out New “Virtual” Patent Marking Provision

By Zach W. Hilton U.S. patent law has long required that patent owners and any licensees mark products they sell with the patent number of any patents covering such products in order to recover pre-suit damages resulting from infringement.  Until the passage of the America Invents Act (“AIA”), compliance with the patent marking statute required that a list of patents appear on a covered product itself, although it was sometimes sufficient to mark the product packaging.  In either case, compliance with the marking statute led to increased manufacturing costs as it was often necessary to retool product molds and/or redesign packaging as additional patents were deemed to cover a product or as patents expired.  The end result was that patent owners were placed at a competitive disadvantage.

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New Joinder Rule May Curb Filings in Eastern District of Texas

By Vincent J. Allen A few years ago, a plaintiff could file suit for patent infringement in any jurisdiction where infringing products were sold.  Because of its short time to trial and plaintiff-friendly jury pools, the Eastern District of Texas became the forum of choice for many plaintiffs.  But in recent years, the courts have clamped down on the liberal venue rules by requiring the transfer to a forum that is “clearly more convenient” in cases where the only connection to the venue is the fact that infringing products are sold there.

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Willful Blindness: The New Standard for Knowledge

by Vincent J. Allen In a decision earlier this year having ramifications in numerous areas of the law in which “knowledge” must be proven, the U.S. Supreme Court applied the doctrine of willful blindness to satisfy the knowledge element for a claim of active inducement of patent infringement. Although the willful blindness doctrine has been well established in criminal law and adopted by every federal court of appeals but one, the Global-Tech Appliances decision marks the first time the Court has approved the doctrine.

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False Patent Marking: The New Gold Rush?

By Vincent J. Allen The Federal Circuit’s Bon Tool decision in late 2009 dramatically increased the number of false patent marking cases filed last year.  Historically, the relatively obsure patent marking statute had been interpreted to allow for a penalty of up to $500 for each decision to mark an unpatented product.  Consequently, there were only a handful of false marking suits pending at any given time.  Times have changed.  The Bon Tool decision opened the flood gates for false marking claims because of the dramatic increase in potential damages to the plaintiff.  A plaintiff in a false marking suit can now recover up to $500 per item sold.  Forest Group Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009).  

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The Patent Prosecution Highway Takes a New Direction

By Colin P. Cahoon In a prior article, we reported on the Patent Prosecution Highway (“PPH”) program developed to promote fast-track patent examination procedures and allow patent offices from around the world to take advantage of work already done by other offices. The PPH was one of the initiatives that was undertaken by the USPTO to help with the always increasing load of patent examinations.

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In re Bose Corp.: The New Sound of Fraud?

By James R. Gourley The Federal Circuit raised the bar last year on the standard of proof needed to support a finding of fraud in connection with trademark registrations in the In re Bose Corp. decision.  Applicants for federal trademark registrations make a number of representations to the United States Patent and Trademark Office (USPTO) over the life of a trademark.

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Sue the B**##@*S!: Jury Selection

Part 2: The Jury (It’s Not a Jury of Your Peers) By Chris Kilgore In the first part of this series, we noted the particular challenge of trying a complex or technical case before a jury.  This is an important consideration because, even though trial may not be the end game, litigation matters can sometimes take on a life of their own. The phrase “jury of your peers” arises from the Magna Carta (1215).  At the time, it meant persons who actually knew the parties, the facts, or had the duty to discover the facts.  The concept of the jury trial as it was understood by the Founding Fathers was intended as another check on government power.  While the jury may work well in that role, the advent of tort litigation around the turn of the 20th Century and cases of ever increasing complexity has put new strains on the efficacy…

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Sue the B**##@*S!: The Litigation Decision

The conventional wisdom is that the number of lawsuits filed rises while the number of transactions fall in a down economy.  When times are good, companies tend not to worry about the “small stuff,” to not account for every penny.  But when times aren’t so good, every penny counts, and litigation is used much more freely.  However, good times or bad, it is always wise to carefully consider the pros and cons of litigation with your legal advisor before “upping the ante,” because the world of litigation is not only entirely different than business as usual, it is also expensive and unpredictable. There are companies that aggressively protect their intellectual property portfolio, litigating routinely, even in the best of times.  However, this is an expensive business model that can only be justified when the size of the business or value of the intellectual property to be protected is significant.  The…

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The USPTO Count System: Using the Count-Carrot to Your Advantage

By Bobby W. Braxton Everyone knows that there are times that are better than others for obtaining good deals.   One of the best times to buy a new car is at the end of the month when the car salesman is desperately trying to reach his or her quota for the month. Better deals can be had on retail items after the holiday season. Likewise, there are times when it is better to negotiate with the United States Patent and Trademark Office (USPTO) during the prosecution of a patent. A patent examiner’s perfor

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Jim Brown Fails to Break Through First Amendment Defense

By Vincent J. Allen Jim Brown’s claim of false endorsement against Electronic Arts in regard to the use of his likeness in the Madden NFL video game was dismissed last year. The decision continues the trend of courts finding that the First Amendment provides a complete defense to a claim of unfair competition when source identifiers are used within video games. Jim Brown is a retired professional football player who is revered as one of the best football players of all time. Electronic Arts (EA) develops and publishes video games, including the popular Madden NFL series. The Madden NFL game is a virtual football game that contains up to 170 virtual teams and 1,500 virtual players. The virtual players include players that wear the names and numbers of current real-life players playing on real-life teams.

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Corporate Legal Departments Turn to Boutique Law Firms

By Vincent J. Allen Budgets for some corporate legal departments have been slashed this year in line with across the board cuts implemented as companies try to weather the downturn in the economy. This leaves corporate counsel with a smaller budget to accomplish the same legal work. In-house counsel at major companies are taking a hard look at outside counsel expenditures to determine if the legal work is being handled efficiently, and many have concluded that a different approach is needed.

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