Posts Categorized: Patent Litigation

Practical Intellectual Property Practices for Corporate Clients

Imagine the embarrassment of having an email discovered during litigation where one of your employees exclaims that your new product probably infringes a competitor’s patent he has only just perused. Of course, it is sound business practice for companies to routinely review their competitors’ published patent applications and issued patents.    Armed with this information, your… Read more »

Hindsight Is 20/20: Options for Amending Issued Patent Claims

Written by Brandon Zuniga Do you have an issued patent? Are you involved in an inter partes review proceeding (IPR) before the Patent Trial and Appeal Board (PTAB)? Given the benefit of hindsight, do you wish you could make a few amendments to your patent claims? If you answered yes to any of these questions,… Read more »

Pre-Litigation Patent Correction Procedures

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 »

Cease and Desist Letters After TC Heartland—Best Practices

The Supreme Court recently reversed over 20 years of Federal Circuit precedent that allowed patent infringement suits to be filed anywhere that the court could exercise personal jurisdiction over the defendant.  So long as, for example, the infringing product was sold in the district, venue was proper there.  As a result of the liberal interpretation… Read more »

Who Carries the Burden in IPR—And, Does it Matter?

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 »

Revisions to PTAB Trial Rules

The USPTO proposed on August 20, 2015 amended rules applicable to trial practice for the three post grant proceedings known as IPR (inter partes review), PGR (post grant review) and CBM (covered business method), as well as derivation proceedings (which replaced the former interference practice).    A comment period of 60 days was set and has… Read more »

Alice Corp. and an “Abstract Idea”

In the recent Alice Corp. v. CLS opinion, the Supreme Court described a two-part “framework,” for making such a distinction between patents that claim the building blocks of human ingenuity and those that integrate the blocks into something more: Determine whether the claim(s) at issue are directed to a patent-ineligible concept, (is it an abstract idea?) and if… Read more »

Patent Eligibility after Alice v. CLS Bank

The U.S. Supreme Court recently issued its decision in Alice v. CLS Bank regarding the patentability of computer-implemented financial and other business methods.  The Court held that patents that attempt to claim simply an “abstract idea” implemented on a general purpose computer are not valid.  Although this is not actually a change in the law,… Read more »

Alice Decision

The Supreme Court affirmed the Federal Circuit’s decision in Alice Corporation v. CLS Bank holding that patents directed to schemes or methods of mitigating settlement risks in the exchange of financial obligations between two parties claimed unpatentable subject matter.  Although the patents recited system claims implementing the method on a computer system, the Supreme Court held… Read more »

Limelight: 9-0 Supreme Court Reversal

There was a brief glimmer of hope for those patents with claims covering steps performed by more than one entity. But once again the Supreme Court has chastised the Federal Circuit for not following its prior precedent.  Specifically, there can be no active inducement of infringement unless there is first direct infringement, and direct infringement… Read more »

There You Go Again – Infringing my Patent!

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 »

The Highway Goes Global

Followers of our newsletter are familiar with the evolution of the Patent Prosecution Highway (“PPH”), from bilateral agreements providing for the acceleration of a patent examination in the office of second filing after the office of first filing finds allowable subject matter, to PCT PPH which allows the same acceleration based on a favorable examination… Read more »

The Neglected Design Patent?

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 »

CLS Bank Patent Analysis and Claims Salvaging

The courts have been particularly active recently with respect to the question of what is patentable subject matter.  Despite this activity, there has been no real guidance provided by the courts to practitioners. In CLS Bank v. Alice Corp., the Federal Circuit found the claimed computer-related subject matter not patentable.  Unfortunately, there were seven different… Read more »

Black Gold: Patent Battle Royale Moving From Silicon Valley to Midland, Texas? | Intellectual Property in the Oil & Gas Industry

We have all heard of the patent battles between tech giants Apple and Samsung.  It is easy to imagine the countless patents that protect the new iPhone and Galaxy smart phones.  However, intellectual property is not limited to the Steve Jobs and Mark Zuckerbergs of the world.  A huge amount of intellectual property is being developed, and protected, in the oil field.  In fact, the next major patent dispute is more likely to involve a method of fracking than a processor on a smart phone.  The reason, in part, is that as “easy oil” reserves become more and more rare, oil and gas companies are developing incredible technological solutions in order to harness oil, which was previously believed unreachable.  In solving these complex problems, they are developing vast amounts of intellectual property.  Oil and gas companies of all sizes need to begin protecting their intellectual property because their competitors are.  Failing to protect intellectual property will place these companies at a huge competitive disadvantage in the long run.

The Federal Circuit’s En Banc Opinion on Patentability Under Section 101 – It’s Splitsville!

by Gregory Perrone

This past Spring, in CLS Bank International, CLS Services Ltd. v. Alice Corp, Pty Ltd. 2011-1301 (Fed. Cir. May 10, 2013), a splintered en banc panel of the United States Court of Appeals for the Federal Circuit vacated its three-member panel’s reversal of the district court’s judgment and affirmed a grant of summary judgment of invalidity.

The en banc panel held that a patent claiming a computerized system and methods for eliminating settlement risk are not eligible for patent protection under 35 U.S.C. Section 101. While the panel’s six opinions and 127 pages provide a menagerie of commentary on why subject matter may or may not be patent eligible, little guidance is offered to inventors, patent counsel or the courts on how to determine whether subject matter is patentable.

Myriad Gene Patent Decision: A New Era in DNA Diagnostic Testing?

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.

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 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.)).

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

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.

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.

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.

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).


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 of the jury system.

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… Read more »

Design Patents after Egyptian Goddess: The Comeback Kid

By Vincent J. Allen

In 1871, the Supreme Court established the standard for proving design patent infringement in Gorham Manufacturing Company v. White.The design patent in Gorham covered the ornamental features of forks and tablespoons. The Supreme Court explained that the appearance of an article may increase its “salable value.”  The test of identity of design “must be sameness of appearance, and mere differences of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity.”  Based on this rationale, the Court outlined the “ordinary observer” test that is still used by courts today in design patent infringement cases:

The Federal Circuit Puts a Damper on Forum Shopping

By Vincent J. Allen

The Eastern District of Texas has the reputation of being a favorable forum for filing patent infringement suits. For the year ending September 31, 2007, more patent cases were filed in the Eastern District than in any other district in the nation. The Central District of California, despite having a substantially greater population of businesses, trailed the Eastern District’s 359 filings by 25.

Ding-Dong! The Witch of Patent Reform is Dead…Or is She?

Many in the patent community are singing the joyous news that the Patent Reform Act of 2007 is dead. Recent events in Congress lead to this conclusion. The departure on May 1, 2008 of the former Solicitor of the U.S. Patent and Trademark Office, John Whealan, from his temporary position with Senate Judiciary Committee Chairman… Read more »

Is a Compulsory License the New Remedy for Successful Patent Litigation?

By David W. Carstens

A patent provides its owner with the right to exclude others from making, using or selling a patented product. These rights may be enforced by filing an infringement lawsuit. In such a lawsuit, the Patent Act empowers the court to issue an injunction against an infringer “in accordance with the principles of equity.”  So how is it possible to acknowledge and honor the right to exclude the making of an infringing product without always granting an injunction against the infringer of those rights? One Texas court is trying carefully to balance these principles of equity to determine when a permanent injunction is appropriate.

Can I Patent My Teddy Bear?

By Colin P. Cahoon

Years ago a non-patent lawyer colleague of mine told me that he had been asked by one of his clients if it was possible to obtain patent protection on the client’s new stuffed animal design.  “There was nothing special about what the stuffed animal did or how it was made.  It just looked like, you know, a variation on a teddy bear.  The client wanted to know if we could get a patent on the look of this fluffy creation, and I said ‘No.’”  I informed my colleague that he needed to call the client back and revise his answer, because he had just given bad advice.

Purchase a Declaratory Judgment Lawsuit for the Price of a Stamp

By Bobby W. Braxton

The recent Supreme Court decision in MedImmune Inc. v Genentech Inc., (January 9, 2007) lowered the hurdle a party must clear before filing a declaratory judgment lawsuit.  A declaratory judgment lawsuit allows a party to seek a determination of the rights among the parties without waiting for the opposing party to file a claim.  Additionally, a potential defendant can race an adversary to the courthouse by filing a declaratory judgment lawsuit in the erstwhile defendant’s choice of forum.

The Battle Continues: Supreme Court v. Federal Circuit

By Vincent J. Allen

The U.S. Supreme Court has reversed all nine patent cases decided on appeal from the Federal Circuit since 2002.  In two cases handed down in April, the Court continues its trend of reversing the Federal Circuit.  In a much anticipated decision, the Court in KSR v. Teleflex unanimously rejected the Federal Circuit’s rigid approach to determining whether a patent is non-obvious in view of the prior art.  Although not as far reaching as KSR, a second case, Microsoft v. AT&T, may hamper owners of software patents in their ability to prevent copying of software outside the United States.

Dallas Leads the Charge with New Patent Rules

By Vincent J. Allen

In an order issued April 2, Chief U.S. District Judge of the Northern District of Texas, A. Joe Fish, established case management rules on a trial basis for patent cases filed in the Dallas Division.  The patent rules apply to all civil actions containing an allegation of utility patent infringement and to any action seeking a declaration that a utility patent is not infringed, is invalid, or is unenforceable.  The patent rules take effect on May 1, 2007 and apply to any Dallas Division patent case filed on or after that date and to certain cases filed prior to the effective date.  Although other districts such as the Eastern District of Texas and the Northern District of California have had patent rules for some time, many other districts are now considering creating patent rules as well.  Dallas is the first in a new wave of districts likely to enact patent rules.