Posts Tagged: "Patent Litigation"

Clear & Convincing: Supreme Court Affirms CAFC in Microsoft v. i4i

icrosoft wanted to see that changed, with prior art not considered by the Patent Office requiring a lower evidentiary threshold to invalidate. To rule in Microsoft’s favor would have required the Supreme Court to throw away 30 years of well-settled Federal Circuit law, as well as overruling Supreme Court precedent in effect since at least 1934, but which traces back in some form from that date a further 100 years. That was a bridge too far for the Supreme Court, who ruled today 9-0 (with concurring opinions but no dissents) that in order to invalidate patent claims 35 U.S.C. 282 requires clear and convincing evidence regardless of whether the prior art was known by the Patent Office during prosecution of the patent application.

What To Do If You Are Sued for Patent Infringement

Despite the gathering storm, some businesses would prefer to pretend that patent infringement is not a problem for them and they won’t be sued. The graph below shows that since 1980 the number of patent lawsuits filed has only gone up, with a record number (3,301) being filed in 2010. Add the frequency of the “dime a dozen” threatening letters sent by those seeking to extract licensing payments to the number of lawsuits filed and you can readily see that patent infringement litigation, and the associated threats thereof, are a growth industry. Here is what you need to know when you get sued or get that threatening letter.

Federal Circuit Re-Settles Law of Inequitable Conduct

Judge Rader wrote: “Left unfettered, the inequitable conduct doctrine has plagued not only the courts but also the entire patent system.” Chief Judge Rader would go on to say that materiality is a “but-for” test, and actually breathed real life into the intent requirement, saying: “Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” The Federal Circuit did decline to adopt the USPTO version of the duty of candor outlined in Rule 56, which I have advocated for, instead opting for an even better, more patentee friendly standard than I myself have advocated for over the years. Today is a good day no doubt. Intent now actually requires intent, and a reference must actually be material in order to satisfy the materiality requirement. What a radical concept!

Extortion Patent Style: Small Business in the Troll Crosshairs

Between 1995 and 2009 the overall median patent litigation damage award was $5.2 million, but between 2002-2009 there was a huge discrepancy between the average damage award for practicing entities versus non-practicing entities. The median award for non-practicing entities was $12.9 million, while the median award for practicing entities lagged far behind at $3.9 million. No wonder there is ever increasing activities by those the Federal Trade Commission refers to as “patent assertion entities,” which seems to be yet another sanitized name for patent troll.

Patent Litigation: Davids Seeking Many Millions from Goliaths

Overall there will be few large paydays for small and mid-size companies against the Fortune 1000, and fewer still for those who do not engage an appropriate strategy and simply rush head first into litigation or licensing negotiations. Notwithstanding, cultivating or acquiring a patent portfolio will allow small and mid-size companies to hold assets that are capable of being leveraged in the event a large corporation comes knocking. Additionally, as the business grows and revenues become available having a patent portfolio can enable small and mid-size companies to pursue litigation against Goliaths, but the odds of prevailing and having critical leverage go up if the plaintiff is a practicing entity. Simply stated, without the threat of a permanent injunction the Goliaths of the corporate world are exceptionally likely to just push you around.

Federal Circuit Says Rambus Illegally Destroyed Documents

On Friday, May 13, 2011, the Federal Circuit issued the latest decision in a long line of Rambus decisions stemming out of conduct of Rambus as it participated in the JEDEC standard-setting body, as well as litigation events that followed. A five judge panel of the Federal Circuit (per Judge Linn) affirmed the district court’s determination that Rambus destroyed documents during its second shred day in contravention of a duty to preserve them and, thus, engaging in spoliation.

Happy 5th Anniversary: The Impact of eBay v. MercExchange

Since the Supreme Court’s decision in eBay v. MercExchange there have been 131 cases where a permanent injunction has issued and 43 cases where a permanent injunction has been denied. Some have tried to pass this off as not much of a departure from the practice prior to the Supreme Court’s decision. Such a viewpoint is, however, not correct. Prior to the Supreme Court’s decision it was virtually unheard of for a district court to deny a victorious plaintiff a permanent injunction in patent infringement case. So the Supreme Court’s decision in eBay v. MercExchange has been one that has significantly altered the patent litigation landscape and, therefore, is easily one of the most important Supreme Court patent cases in recent memory.

Best Mode Patent-Raptor Claims Another Victim in Wellman

What is startling about Wellman is how the patentee put the ‘863 and ‘317 patents squarely in the path of the “best mode” Patent-Raptor by deliberately keeping the Ti818 recipe a trade secret. As I’ve instructed numerous clients, you have a clear choice on “best mode” issue: (1) disclose the “best mode” and file the patent; or (2) don’t file the patent if you want to keep the “best mode” as a trade secret. There is simply no “in between” on this issue. The only question now is whether the Tyrannosaurus Rex of patent law (inequitable conduct) will devour what is left of the Wellman patents.

TiVo, DISH and EchoStar, The $500 Million Patent Settlement

Just 12 days ago the United States Court of Appeals for the Federal Circuit issued its ruling in TiVo v. EchoStar, largely handing TiVo a victory in the epic saga between the two satellite TV giants. Earlier today TiVo Inc. (NASDAQ: TIVO), DISH Network Corporation (NASDAQ: DISH), and EchoStar Corporation (NASDAQ: SATS) announced today that they have settled all of their ongoing patent litigation. Under the terms of the settlement, DISH Network and EchoStar agreed to pay TiVo $500 million. On top of that the companies seem to have entered into a cross-promotion cooperation agreement.

Understanding NPEs: Patent Troll Myths Debunked

I was surprised about how wrong my own intuition was, which is why I focus on the myths about patent trolls. Just about everything we thought we knew – good or bad – does not appear to be true. The article may not change too many minds about patent trolls. Those who believe NPEs are bad for society won’t care much about where they came from. However, I think that NPEs are a reflection of inventive society — their patents come from all sorts of sources, and how we feel about NPEs should depend on how we feel about the people who invested in the research that create the patents and the role patent law played in innovation.

The Impact of the CAFC’s Joint Infringement Conundrum on Protecting Interactive Technologies

The conundrum created by the Federal Circuit’s joint infringement doctrine and its impact on protecting interactive computer-based technologies got worse last week with McKesson Technologies, Inc. v. Epic Systems Corp. McKesson Technologies involved a patented interactive electronic method for communicating between healthcare providers and patients about personalized web pages for doctors. Judge Linn’s majority opinion (and a “thin” at majority at that) ruled that, because the initial step of the patented method was performed by the patient while the remaining steps were performed by the software provided by the healthcare provider, there was no infringement, direct, indirect, joint or otherwise of the patented method.

Microsoft i4i Oral Arguments Complete at Supreme Court

Hungar would go on to say that the clear and convincing standard “makes no sense,” which nearly immediately drew the first comment from the bench with Justice Ginsburg saying that it would be difficult to say the standard makes no sense when it was supported by Justice Cardozo and Judge Rich. Ginsberg would later, in a nearly annoyed way, say “then you have to be saying that Judge Rich got it wrong…” Hungar cut off Justice Ginsburg, not typically a wise move.

Did the CAFC Miss the Real “Written Description” Issue in Crown Packaging?

In my view, both the majority opinion, as well as Judge Dyk’s dissent, miss the real “written description” problem in Crown Packaging which has nothing to do with whether the common patent specification illustrates both solutions to the prior art problem. Instead, it relates to the follow description (see column 1, line 62 to column 2, line 5 of the ‘826 patent) at the end of the sentence stating how the claimed invention solved the problem of using less metal in the can end: “characterized [or “characterised” depending on which version of the ‘826 patent you use] in that, the chuck wall is inclined to an axis perpendicular to the exterior of the central panel at an angle between 30o and 60o and the concave [i.e., the reinforcing] bead narrower than 1.5 mm (0.060”).”

Intellectual Property Insurance: What Attorneys Need to Know

Many clients are unaware that the commercial general liability insurance (CGL) policy they hold is not fully protecting their most valuable assets, the ability to sell their products. And, most IP attorneys do not know that IP insurance is available to help fund their client’s IP litigation risks. If a client’s IP becomes involved in litigation, specialized IP Insurance products will help ensure that there are funds available to pay the associated legal expenses. Without specific IP Insurance in place, the client may be left with a less desirable way of protecting their IP assets.

Federal Circuit Orders Transfers Verizon out of Eastern Texas

With respect to Verizon et al, the petitioners moved to transfer the case to the Northern District of Texas, Dallas Division, which is approximately 150 miles away from the Eastern District of Texas, Marshall Division. The motion was initially denied by a Magistrate Judge. In his decision, the Magistrate agreed with the petitioners that the Northern District of Texas, Dallas Division would likely be more convenient for the parties and the witnesses, and he even noted that a number of party witnesses resided within 100 miles of Dallas and no witness resided within 100 miles of Marshall, Texas. Let’s let that sit for a moment, shall we? It was determined that the Northern District would be more convenient for the parties and witnesses and that not a single witness lived within 100 miles of the Eastern District of Texas, yet the motion to transfer was denied?