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February 13, 2012
In Marctech v. Johnson & Johnson the Federal Circuit reviewed whether Chief Judge Herndon of the Southern District of Illinois erred when he found the case was “exceptional” and awarded $3,873,865.01 in fees on that basis. In a unanimous opinion written by Circuit Judge O’Malley, the Federal Circuit panel affirmed the district judge’s opinion. Title 35 of the US Code Section 285 gives district court judges the discretion to award reasonable attorney’s fees in “exceptional cases.” A case is deemed exceptional when there has been “willful infringement, fraud, or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation...Additionally, a court can award attorney fees under § 285 if the action is brought in subjective bad faith and is objectively baseless.”
January 5, 2012
Eleven judges of the Federal Circuit convened en banc today to hear oral arguments on whether and when, to allow patent owners to pursue remedies for “joint infringement” of their patents. Joint infringement also called “divided infringement” would occur when no single defendant practices all the elements of a patent claim, but different defendants act in a way that does so. An important open issue is what type of relationship is required between the defendants for joint infringement to occur. In Akamai Technologies v. Limelight Networks, Inc., a Federal Circuit panel held that joint infringement requires “some sort of agency relationship between the parties...or [for one to be] contractually obligated to the other to perform the steps.” At today’s hearing, Akamai’s counsel argued that the panel’s holding created an “unfair loophole.” Akamai’s pointed out that the patent statute provides remedies against “whoever uses the patented invention,” and Akamai argued that “whoever” can be either a single party or more than one party.
November 1, 2011
The Federal Circuit Waves Good-bye to the Presumption of Irreparable Harm for Patent Injunction Requests
The Federal Circuit joined the Ninth Circuit and the Second Circuit in deciding that the Supreme Court’s Ebay decision rejects the presumption of irreparable harm in patent infringement cases. This presumption is employed by some district courts when determining whether an injunction is suitable. Before Ebay, the Federal Circuit generally followed the rule that “a permanent injunction will issue once infringement and validity have been adjudged, absent a sound reason to deny relief.” Further, in the context of preliminary injunctions, the Court applied “an express presumption of irreparable harm upon a finding that a plaintiff was likely to succeed on the merits.” In Ebay, the Supreme Court stated the patentee must show: it suffered irreparable injury, the remedies at law are inadequate to compensate the injury, considering the balance of hardships an equitable remedy is warranted, and public interest is not disserved by the injunction.
September 15, 2011
ON SEPTEMBER 8, 2011, the Senate passed the Smith-Leahy America Invents Act (the “AIA”), reforming the law of patents after years of debate in both the House and the Senate. The House had passed the bill back in June. Some of the major highlights of the AIA are as follows: Brings U.S. patent law more in line with the patent laws of most other countries the U.S. conducts trade with by switching from a first-to-invent system to a first-to-file system, broadens the definition of prior art in §102 while maintaining the 1 year grace period for inventors to file an application after public disclosure. Repeals §103 provisions relating to inventions made abroad and statutory invention registration, creates a civil action by a patent owner against another patent owner claiming the same invention with an earlier filing date that was derived from the invention claimed by the person seeking relief, allows a third party to institute a post-grant review of validity, and an inter partes review on specified novelty and non-obvious grounds based on submitted prior art, but places certain limitations on the procedure.
September 9, 2011
On September 8, the U.S. Senate voted to pass a patent reform bill which will drastically change patent filing and the reexamination process. One major change is that the patent system will become a first-to-file system. The current system credits the invention to whoever first conceived of it. This inquiry can result in costly and lengthy litigation. Under the new first-to-file system, the first inventor to file would be created as the inventor. This approach would cut down on costs but also would encourage investors to rush to the United States Patent and Trademark office (USPTO).
December 22, 2010
Nokia claims that Apple’s iPhone, iPad and iPod Touch infringe Nokia's patents relating to touch user interfaces, on-device app stores, antenna structures, and chip sets. On December 16, Nokia filed patent infringement suits against Apple in the UK, Germany, and the Netherlands. Nokia previously sued Apple in the U.S. District Court for the District of Delaware and the U.S. District Court for the Western District of Wisconsin and brought exclusion proceedings against Apple in the U.S. International Trade Commission. In these various proceedings, Nokia has asserted at least 24 U.S. patents. The new overseas cases add 13 additional patents that Apple will have to defend against.
September 27, 2010
On Wednesday, I gave a presentation by conference call to the California State Bar’s Patent Standing Committee. I provided my analysis of the recent Supreme Court decision in Bilski v. Kappos and some predictions about the future consequences of that decision and about the issues left open by the Court. In Bilski, the Supreme Court held that the Federal Circuit’s “machine or transformation” test was not the only way to identify patentable subject matter – but the Court failed to provide a definitive test for patentability.