Patent Litigation Treatise Update

Yes, this may be appropriately characterized as coming from the shameless commerce division, but at least some will probably want to know that the PLI Patent Litigation treatise has been recently refreshed to include some important updates. Even if you do not own the treatise, or who don’t plan on buying it, would probably still be interested in this readers digest length version of the updates to various important patent law matters published below.  This snapshot-update is provided courtesy of PLI.

Furthermore, PLI offers this free sample chapter, which relates to Damages and Attorneys Fees.  Who doesn’t like free stuff?

The updates include additions to six chapters. Contributors for this latest update release are Timothy J. Malloy, Stephen F. Sherry, and Kirk A. Vander Leest (chapter 6), Gary M. Hoffman, Charles W. Saber, and Dipu A. Doshi (chapter 7), Christopher J. Renk, and Ted L. Field (chapter 8), Laurence H. Pretty (chapter 9), John F. Sweeney (chapter 10), and Allen M. Sokal and James R. Barney (chapter 13).

This release adds new material on the following topics and others:

Claim construction—standard of review: A concurring opinion in the Federal Circuit’s Trading Technologies International, Inc. v. Espeed, Inc. observed that “the current de novo standard of review for claim construction may result in the unintended consequences of discouraging settlement, encouraging appeals, and, in some cases, multiplying the proceedings.” Although proposals were made to provide for interlocutory appeals of claim constructions, the final version of the America Invents Act did not include any such provision. See § 7:2.1, at note 8.1.

Claim construction—differences among claims: In Voda v. Cordis Corp., the Federal Circuit relied on Phillips v. AWH Corp. for the proposition that “[d]ifferences among the claims can also be a useful guide in understanding the meaning of particular claim terms.” See § 7:2.5, at note 131.1.

Claim construction—local patent rules: New discussion highlights key provisions of the amended local patent rules of the Northern District of Illinois, and also notes new rules in the districts of New Jersey, Idaho, and Northern Ohio setting forth special procedures for cases arising under the Hatch- Waxman Act. See § 7:2.10, at note 187.

Expert witnesses: The 2010 amendments to the Federal Rules of Civil Procedure remedied perceived problems arising from the discovery of experts’ draft reports and their communications with attorneys. Rule 26 was amended in three ways: (1) to limit the expert report to “facts or data” considered by the expert (rather than “data or other information,” as in the former rule); (2) to protect drafts of expert reports under the doctrine of work-product immunity; and (3) to protect attorney-expert communications as work product, subject to several exceptions. See § 8:3, at note 29.

Inventor testimony: In a 2011 case, the Federal Circuit reversed the district court when it had relied on an inventor’s testimony that was against the patent owner’s interest. In CBT Flint Partners, LLC v. Return Path, Inc., the district court granted summary judgment of invalidity for indefiniteness because it held that there was an error in the claim language whose correction was subject to reasonable debate. On appeal, the Federal Circuit held that “[t]he district court erred in its heavy reliance on one portion of inventor testimony” in which one of the inventors—who also prosecuted the patent—“testified that he was not sure what he meant by the claim language” at issue. See § 8:2.2, at note 24.1. Also, the importance of credible inventor testimony in defending against a charge of inequitable conduct was recently demonstrated in the case of Aventis Pharma S.A. v. Hospira, Inc., where one of the inventors in his testimony failed to successfully explain why he withheld certain material references from the Patent Office. See § 8:4.3, at note 111.1.

Section 337 of Tariff Act: The Federal Circuit’s John Mezzalingua Associates, Inc. v. International Trade Commission clarifies what is required to obtain an order under section 337 barring importation of infringing products. In general, a patentee can satisfy the statute’s “domestic industry” requirement by establishing substantial investment in the patent’s exploitation through licensing. The complainant in John Mezzalingua pointed to its expenses in a prior litigation—one that resulted in a single license—as such an investment in licensing, but the ITC ruled to the contrary, as did the Federal Circuit: “[E]xpenditures on patent litigation do not automatically constitute evidence of the existence of an industry in the United States established by substantial investment in the exploitation of a patent.” See § 10:1.2, at note 12.1.

Injunctions—bond requirement: As the Federal Circuit noted in Apple, Inc. v. Samsung Elecs. Co., the bond requirement is “designed to protect the enjoined party’s interests in the event that future proceedings show the injunction issued wrongfully.” See § 10:4.6, at note 81.1.

Damages—reasonable royalty: As evidence of a reasonable royalty, patentees regularly produce existing licenses, but they may resist, on Rule 408 privilege grounds, producing documents regarding the negotiations that preceded such licenses. However, the Federal Circuit has ruled that settlement negotiations with third-party licensees under the patent related to reasonable royalties and damage calculations are not protected against discovery by a settlement negotiation privilege. See § 9:5.6, at note 90.1.

Damages—“recklessness”: The Federal Circuit has held that “the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review” (Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc.). See § 9:10.1, at note 126.1.

Federal Circuit review of ITC rulings: The Federal Circuit reviews legal determinations of the International Trade Commission de novo and reviews the ITC’s factual findings for substantial evidence. The Federal Circuit has indicated that it will, in appropriate circumstances, afford Chevron deference to the ITC’s interpretation of statutes it is charged with administering, including 19 U.S.C. § 337. See § 13:5.1, at note 54.1.