IPWatchdog.com is in the process of transitioning to a newer version of our website. Please be patient with us while we work out all the kinks.

Posts Tagged: "Derek Dahlgren"

An Opportunity for Clarity in Design Patent Damages

The Federal Circuit has a unique opportunity to clarify the law concerning damages under § 289 in the Apple v. Samsung case. Focusing on the scope of infringement and causation can give meaning to the language of § 289 and its legislative history, while also alleviating concerns about absurd results such as the award of total profits from a $100,000 piece of construction equipment when a lug nut with a patented design is applied to the piece of equipment. Infringement of the lug nut’s design should not result in lost profits on the $100,000 piece of equipment, but to affirm the holding in the instant case could indeed lead to such an absurdity.

Patent Eligibility Post-Alice

From a patent challenger’s perspective, Alice further reinforces the need to evaluate whether an early dispositive motion under § 101 can end the litigation. In crafting such motions, it is important to clearly define the abstract idea and to demonstrate how it is merely well-understood, routine, conventional activity. Additionally, it may be helpful to articulate how the claims do not recite any technological improvement. Another strategy is to petition the PTO to institute a covered business method (CBM) patent review. A CBM proceeding may be preferred as the evidentiary burden is lower compared to district court litigation. Currently, the PTO has taken the position that § 101 is an available basis for challenging claims in a CBM proceeding. However, please note that the availability of §101 is being challenged at the Federal Circuit.

The Role of Territoriality in Patent Exhaustion

Patent exhaustion is one of the most fundamental restrictions on patent rights. Under this doctrine, an authorized sale of a patented article moves it outside the scope of the U.S. patent monopoly. With respect to the vended article, the patent right is extinguished and the patentee can no longer sue for infringement. One question that remains unsettled, however, is the role of territoriality. That is, where must the authorized sale take place? For well over a century courts have struggled to answer whether extraterritorial sales qualify for purposes of patent exhaustion.