Posts Tagged: "patent infringement"

A Recent Senate IP Subcommittee Hearing Demonstrates the Danger of Patent Fallacies

During the Senate Judiciary’s Subcommittee on Intellectual Property hearing, titled Protecting Real Innovations by Improving Patent Quality, held on June 22,  Jorge Contreras, Presidential Scholar and Professor of Law at the S.J. Quinney College of Law of the University of Utah, testified under oath that patents are effectively the same thing as products, and seemed to suggest that executive fraud unrelated to patents must make the patents fraudulent too. This, of course, is a fallacy. It shows a fundamental and deep misunderstanding of what patents are and how they work, and completely misrepresents law and logic. If taken seriously, Contreras’ testimony would destroy the value of virtually every patent portfolio and further chill investment in new technologies. It is an alarming position coming from a patent lawyer and credentialed law school professor who claims he is “intimately familiar with the topic of today’s hearings.”

Minerva v. Hologic: SCOTUS Retains but Limits Assignor Estoppel Doctrine, Criticizing CAFC Approach

The U.S. Supreme Court ruled 5-4 this morning in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC that the doctrine of assignor estoppel”—which bars the assignor of a patent from later attacking the patent’s validity—“is well grounded in centuries-old fairness principles…[but] applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Thus, while the Court rejected Minerva’s request that the doctrine be abandoned, the judgment of the U.S. Court of Appeals for the Federal Circuit (CAFC) was vacated and the case remanded to address “whether Hologic’s new claim is materially broader” than the ones that were assigned.

Mega Awards Likely to Highlight Unpredictability of U.S. Patent Damages Law

Calculating damages in patent infringement suits is a high-stakes, complex matter of law and economics that often starts with the Georgia Pacific factors at the district court and ends with recalculation by the Federal Circuit or an order for a new damages trial. The fight over damages at the conclusion of a patent infringement trial is always contested, and one issue lost, or one inappropriate calculation, can easily skew the math dramatically. Factor in compounding pre-judgment and post-judgment interest, as well as a potential enhancement multiplier for willful infringement under 35 U.S.C. 285, and it is easy to understand why parties fight over everything relating to damages calculations.

Patent Filings Roundup: Ice Castle Patent Asserted Against Competitors; Open-Source Chip Declaratory Judgment Action

It was a pretty normal week patent filings-wise, with 65 district court complaints and 38 Patent Trial and Appeal Board (PTAB) petitions filed, all inter partes reviews (IPRs). “Frozen Assets Asserted”: I’ve heard of castles built on sand and castles built in the sky, but this patent is about those built of ice—and the apparent cutthroat nature of the niche but seemingly quite profitable business. Ice Castles, LLC, according to them, is a Utah-based “awe-inspiring, must-see winter phenomenon built with hundreds of thousands of icicles that brings fairy tales to life.” Per them, founder Brent Christensen began experimenting with ice buildings as a hobby in the winter of 2009, and the following year, made one for a local resort; he patented his method of making these ice structures, which was granted in 2013. His business flourished, as he started both making ice castles, selling tickets, and leasing and managing other destination locations in other states, including New Hampshire. Well, this week they sued Harbor Enterprises Marketing & Productions, Lester Spear, and Cameron Clan Snack Co. LCC on U.S. Patent 8,511,042, claiming the Maine-based company had constructed an infringing ice castle in Maine in 2021, and charged an admission fee, including multiple photos of the Maine location in their complaint.

Using AI to Valuate and Determine Essentiality for SEPs

One of the major challenges when licensing, transacting, or managing Standard Essential Patents (SEPs) is that there is no public database that provides information about verified SEPs. Standard-setting organizations (SSOs) such as ETSI (4G / 5G), IEEE (Wi-Fi), or ITUT (HEVC/VVC) maintain databases of so-called self-declared patents to document the fair, reasonable and non-discriminatory (FRAND) obligation. However, SSOs do not determine whether any of the declared patents are essential, nor are the declarants required to provide any proof or updates. As a result, in the course of licensing negotiations, patent acquisitions, or litigation, the question about which patents are essential and which are not is one of the most debated when negotiating SEP portfolio value, royalties, or infringement claims. Artificial Intelligence (AI) solutions have started to support the process of understanding how patent claims relate to standards to assess larger SEP portfolios without spending weeks and months and significant dollars on manual reviews by technical subject matter experts and counsel.