Posts Tagged: "Patent Litigation"

The Impact of the America Invents Act on the Definition of Prior Art

While the search for prior art won’t likely be impacted, the value of the prior art located will be dramatically impacted according to Ken Hattori, partner in the Washington, D.C. firm of Westerman, Hattori, Daniels & Adrian, LLP. “US patents with a foreign priority claim will become tremendously stronger as prior art,” says Hattori. “The subject matter disclosed in the US patent has an effectively filed date as priority date since the Hilmer doctrine is eliminated.” This is significant because “there will be no Section 112 requirement for the description of the subject matter disclosed in the foreign specification. Thus, the subject matter in a prior art US patent or application will go back to the foreign filing date as a reference.”

Intellectual Property as a Corporate Asset

The theme of the annual meeting of the AIPF this year is “intellectual property as a corporate asset.” There are indeed presentations sprinkled across the two days of this meeting that relate specifically to this topic. Another recurring and equally treated topic is the use of the Internet in practice in a variety of contexts — attracting clients, networking generally and use of the Internet for investigations. Topics of particular interest included: (1) The Invisible Hand: Models for Monetizing Patents in the 21st Century; (2) Lies, Damn Lies, and Lawyers; (3) Contingent Fee Arrangements in Enforcing IP Rights; and (4) Economic Effect of Non Practicing Entities.

Canon Sued for Infringing Noise-Reduction Camera Patent

On Friday, September 21, 2012, Canon, Inc. (NYSE: CAJ) was sued for patent infringement by Yama Capital, LLC, which is a limited liability company organized under the laws of the State of Delaware.  The complaint, which alleges Canon infringes U.S. Patent No. 6,069,982 (“the ‘982 patent”) was filed in the U.S. District Court for the Southern District of New York. The ‘982 patent was originally assigned to Polaroid. According to the complaint, Canon has known about the patent for at least 10 years and believes there is infringement based on certain statements contained in the Canon EOS System Summer 2012 brochure. Specifically, the complaint asserts: “Canon’s website boasts that its digital cameras include noise reduction that produces clear images when shooting in low light at high ISO speeds and advertises its infringing noise-reduction technology as a product differentiator.”

RMail v. Amazon.com: Can Invalidity Based on 35 U.S.C. § 101 Be Properly Raised as a Defense in Litigation?*

As pointed out astutely by RMail is that the Supreme Court jurisprudence on patent-eligibility under 35 U.S.C. § 101 have primarily involved ex parte prosecution appeals from the USPTO. There are only two instances involving patent litigation I’m aware of where the Supreme Court squarely determined patent-eligibility under 35 U.S.C. § 101: the recent case of Mayo Collaborative Services v. Prometheus Laboratories, Inc. (ruling that the claimed method was patent-ineligible under the “law of nature” doctrine); and the 2001 case of Pioneer Hi-Bred International v. JEM AG Supply (which ruled that sexually reproduced plants qualified as either “manufactures” or “compositions of matter” under 35 U.S.C. § 101). But as RMail correctly observed, no one seems to have pointed out to the Supreme Court this important threshold issue of statutory construction, and statutory limitations on the powers of the federal courts. Accordingly, Prometheus does not bar this Court from issuing a correct ruling in the present adversarial context.

Patent Verdicts We Planned For

News analysis and op-ed pieces following the $1 billion jury decision in Apple v. Samsung have been filled with reactive statements critical of the US patent system. Apple’s enforcement of its patents may “literally choke innovation” cried one law professor. A critic of the decision said that cases like this will require competitors to innovators like Apple to be much more mindful of patents and to “try to avoid or secure rights to [patents]” before bringing a product to market. What the critics have not explained is how making it easier for a foreign company like Samsung to steal US-born innovation is in our long-term national interest.

Here they go again – this time with the Patent SHIELD Act

Indeed, the bill’s co-sponsor acknowledges and states “[t]his bill combats the problem of patent trolls by moving to a ‘loser pays’ system for software and hardware patent litigation.” However, the bill’s sponsors fail to explain what makes the frequency, risk, or social harm of “egregious” patent lawsuits any different than those of other “egregious” civil suits in America so as to single out patent right enforcement for a special treatment under civil law. In fact, the following graph shows that in the last four decades the number of patent lawsuits filed per year has risen at slower pace than other IP lawsuits or when compared to all Federal civil suits. Patent lawsuits now constitute a little over 1% of all Federal civil suits – the same fraction as that in the mid 1970’s.

Apple’s ‘Innovative’ Australian Patent Strategy

As readers will no doubt be aware, Australia is one of the jurisdictions in which Apple is currently pursuing litigation against its Android-based smartphone and tablet competitors. The claims and counter-claims by Apple and Samsung are the subject of a trial in the Australian Federal Court in Sydney which has now been extended into the first months of 2013. According to reports, as many as 22 Apple patents have been asserted against Samsung, although it is as yet unclear how many of these will actually be pressed at trial. A number of the asserted patents are innovation patents. An ‘innovation patent’, is in many respects unique to Australia. An innovation patent provides a ‘second tier’ right, with a lower barrier to validity than the conventional inventive step test, and a shorter maximum term of protection of just eight years.

New Patent Reform Takes Swing at Patent Trolls

Yesterday Congressman Peter DeFazio (D-OR) and Congressman Jason Chaffetz (R-UT) introduced the Saving High-tech Innovators from Egregious Legal Disputes Act, or SHIELD Act for short. If ever passed into law the SHIELD Act would ostensibly adopt a variation on the English Rule, where the losing patent owner pays the legal fees of the victorious patent defendant when there was no “reasonable likelihood” that the patentee would prevail in the litigation. If theAct required a claim chart upon filing, applied across the board to all those who would seek to manipulate the patent system and not just computer/software patents and defined “reasonable likelihood of success” I would be on board with both feet.  As it is, I am on board with one foot and hopefully that improvements can be made to this important piece of legislation.

Yahoo & Facebook Settle Patent Battle with Strategic Partnership

This is an interesting development, and one that seems to make sense from both perspectives. When giant corporations are suing each other it is because they are in immature markets, such as we see with the enormous patent litigation surrounding various smart phones, tablet devices and the operating systems that power them. Lawsuits are the mark of an immature market because in the end no one really ever wins, that is except for the lawyers. The patent litigators make out handsomely, and there is absolutely nothing wrong with that. My patent attorney brethren thank you immensely I’m sure, and I am hardly going to take issue with capitalism at work. If you want to sue someone and you have the funds to hire an attorney then have at it!

Valid but Not Infringed, Merck’s Loses Blockbuster Nasonex®

Last week, on Friday, June 15, 2012, Merck (NYSE: MRK) announced the U.S. District Court for the District of New Jersey (Judge Peter G. Sheridan) ruled against the company on the issue of patent infringement in its suit against Apotex Inc. According to Merck, global sales of Nasonex® in 2010 topped $1.2 billion. See Merck News. A variety of Internet sources place the Nasonex® market share of the inhaled steroid market at 47%. Therefore, this patent loss some 6 years before the Nasonex® patent expires is a big deal.

More Patent Trouble for HTC and Motorola at the ITC

On Thursday, June 7, 2012, the U.S. International Trade Commission (ITC) announced that it had launched an investigation into whether certain RF Micro Devices, Inc. (RFMD) products infringe patents owned by Peregrine Semiconductor Corporation, a leading provider of high-performance radio-frequency (RF) integrated circuits (ICs). The action and investigation initiated by the ITC include Motorola Mobility, Inc. and HTC Corporation (HTC), whose products incorporate the alleged infringing RF ICs. Peregrine holds numerous U.S. and foreign patents based on its work in developing and manufacturing high-performance products that can be produced using standard CMOS-based semiconductor manufacturing processes. These patented innovations allow RF solutions to be produced with a combination of high levels of monolithic integration and performance, small size and low power consumption.

Patent Lawsuits Extreme: Household Names Compete for Customers, Brand Reputation and Innovative Technologies

But how exactly do patents do all of these wonderful things for companies? Unlike trademarks and copyrights, patents are incredibly difficult to acquire. But a patent, once acquired, grants the holder a fairly long monopoly over their creation. No other individual or corporation can use the patent holder’s creation without negotiating a license (or some other arrangement). Thus, patent holders have a huge advantage over the competition via exclusive use or a profit from licensing. Because, the technology companies heavily market new and cutting-edge products, there is a constant need to acquire new patents to stay ahead of competitors.

Patent Litigation Study Discusses Dealing with NPEs

Attendees agreed that it’s critical for companies to gain greater leverage to deter nuisance lawsuits and manage costs by reducing the cost of litigation defense. According to those surveyed this is accomplished, at least in part, through the use of joint defense groups (JDGs), where parties engage in shared co-counsel to reduce defense costs. JDGs have been used in approximately two-thirds of all NPE cases, and three-quarters of those surveyed reported working in some capacity with JDGs.

Prior User Rights: The Uncertainty Will Cost You

Section 273 uses language that is untested in the court system. Clarity with respect to statutory construction is especially important to those who wish to take advantage of a prior use but will only later find out when tested during litigation that their use does not qualify under the statute. As argued by Sen. Roy Blunt, “assurances are all the more important for U.S. companies in the biotechnology field with extraordinarily long lead times for commercialization of its products.” [2] Therefore the scope of protection and reliance upon the defense is concerning to those who might enjoy this defense which may lead to a detrimental reliance on the part of those would be prior users.

Goliath vs. Goliath: Yahoo and Facebook Sue Over Patents

The meat of the litigation revolves around patents. For decades patents have been a significant part of intellectual property law, but in recent years they have proven problematic in the development of new software and the technological innovations. Patents will now be at the heart of a cold war between two of the biggest tech companies in the world. Yahoo, which owns about 1,000 patents, is suing Facebook over 10 patent infringements ranging from Internet advertising methods and privacy controls. One of the patents is described as “optimum placement of advertisements on a webpage.” Yahoo had warned Facebook that they would sue if the social network did not agree to license the patents in question, saying that multiple other major companies had complied. Yahoo was true to their word, and called Facebook’s bluff.