• EPO ready for the first Unitary Patent as soon as the ratification requirements are met

    One of the great aspects of the Unitary Patent is that it follows the normal EPO procedure up to grant. And indeed, the search and the examination processes will be precisely the same as those you’ve been used to with the current EP and PCT procedures, and will be performed by the same examiners. One of the strengths of the EPO is that we allocate examiners to applications according to their technical expertise, regardless of the filing route through which applications arrive. It will only be…

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  • A review of enhanced damages since Halo: Minimizing potential exposure to enhanced damages

    Since the Supreme Court’s decision in Halo, there have been approximately 100 cases analyzing whether the adjudged infringer acted egregiously/willfully en route to a determination of whether to enhance a damages award (and, if so, to what degree damages should be enhanced). The issue of egregiousness/willfulness and/or enhanced damages has been the subject of Federal Circuit opinions on seven occasions since Halo. With two exceptions noted herein regarding the availability of enhanced damages…

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  • Attorneys fees denied in ULTRATEC v. SORENSON COMMUNICATIONS

    Defendants had prevailed on a JNOV [ After trial, the court granted defendants’ motion for judgment as a matter of law that the ‘398 patent is invalid as obvious. ] and sought a fee award.

    From the decision:

    The question is not governed by clear-cut rules, but the court’s discretion is guided by the purpose of fee-shifting under § 285, which is to dissuade unreasonable lawsuits and litigation tactics by compensating the prevailing party for enduring them. See, e.g., Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1930-31 (2015). The court should not award fees to punish a patent holder simply for failing to prove infringement. Gaymar Indus., Inc. v. Cincinnati Sub-Zero Prods., Inc., 790 F.3d 1369, 1373 (Fed. Cir. 2015) (citing Octane, 134 S. Ct. at 1753). A litigation position that seems obviously wrong after a decision on the merits might have seemed reasonable when judged without the benefit of hindsight. And fee-shifting in routine cases would deter legitimate efforts to enforce patent rights. So the court will award fees only if there has been some [*3] conduct that warrants imposing on the losing party the additional burden of paying the other side’s attorney fees. The court need not find that the losing case was frivolous, or that it was brought in bad faith for an illegitimate purpose (although that would clearly warrant fee-shifting). See Lumen View Tech., LLC v. Findthebest.com, Inc., 24 F. Supp. 3d 329, 335 (S.D.N.Y. 2014), aff’d, 811 F.3d 479 (Fed. Cir. 2016). Such clearly inappropriate cases and tactics would be sanctionable pursuant to Rule 11 or the court’s inherent powers even without § 285.

    Because the purpose of § 285 is to compensate parties forced to defend against unreasonable litigation and to deter improper conduct, a good way to think of the question is this: was the losing party’s case so unusually weak on the merits that it suggests an improper purpose or demonstrates irresponsible conduct that should be deterred? Or, is there other evidence, besides substantive weakness on the merits, that suggests an improper purpose? With these questions in mind, the court turns to the parties’ arguments.
    Defendants argue that plaintiffs knew their patent was invalid as obvious over their own prior art, the CapTel trials combined with U.S. Patent Publication No. 2002/0085685 (the
    ‘685 publication), yet argued during litigation that the CapTel trials weren’t [*4] prior art, but rather were an experimental use. They complain that plaintiffs mischaracterized the evidence concerning the trials and made “objectively baseless arguments that contradicted well-settled legal principles” concerning the experimental-use exception. Dkt. 735, at 13.

    (…)

    So although plaintiffs’ position concerning the CapTel trials was not ultimately successful, it was far from unreasonable. Whether the trials were an experimental use was a close call, especially in the uncharted territory of applying the experimental use exception within the context of prior art.

    citation: 2017 U.S. Dist. LEXIS 148132 (WD Wisc 2017)

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  • Domain name case in ED Va


    Before the Court are Proposed Findings of Fact and Recommendations (“Report”) issued by a magistrate judge on August 24, 2017 [Dkt. No. 19]. The Report recommends that plaintiff’s Motion for Entry of Default Judgment [Dkt. No. 15] be granted, that VeriSign, Inc., the registry of domain name, 411mania.com (the “Infringing Domain Name”), be ordered to require the current registrar to transfer the registrations for the Infringing Domain Name to plaintiff, 411Mania.com, LLC, and that Defendant John Doe be dismissed without prejudice. The Report advised the parties that any objection to the Report had to be filed within fourteen days of service of the Report and that failure to file a timely objection barred appeal of “any finding or conclusion accepted or adopted by the District Judge except upon grounds of plain error.” Report at 19. As of September 11, 2017, no objections have been filed by any party.
    Plaintiff brings an in rem action under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). Accordingly, [*2] the Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§1331 and 1338(a). Venue is proper under the ACPA because VeriSign, Inc., the domain name registry is located in this district. 15 U.S.C. §§ 1125(d)(2)(A) and (C).
    The Court has in rem jurisdiction over the Infringing Domain Name pursuant to 15 U.S.C. § 1125(d)(2)(A). Under this provision, a court in the judicial district in which the domain name registry is located has in rem jurisdiction if “the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office” and the owner of the mark “is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action” under the ACPA or “through due diligence was not able to find a person who would have been a defendant” after sending notice of the claimed violation and the owner’s intent to file suit to the registrant. 15 U.S.C. § 1125(d)(2)(A).

    from 411 MANIA.COM, LLC, Plaintiff, 2017 U.S. Dist. LEXIS 147547

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  • ED Texas on Daubert/Kumho issue

    Plaintiff Network-1 moved to exclude certain opinions of expert Ambreen Salters, as unreliable.However, to the extent Plaintiff disagrees with the accuracy of Salters’s decision to treat the fluctuating numbers in the spreadsheet as variable costs, or…

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  • HEREIN

                            目次はこちら

    HEREIN

    $$ The herein described sealing means comprises in a first embodiment an essentially P-shaped cross-section. / 本明細書に記載された密閉…

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  • Waymo v. Uber: Federal Circuit Denies Uber’s Arbitration Claim – Trial Moves Foreward

    Waymo v. Uber (Fed. Cir. 2017) The Federal Circuit has released a pair of decisions (2017-2235; 2017-2130) in this patent / trade secret case.  Waymo (Google) sued Uber (Ottomotto) for patent infringement and trade secret misappropriations. “Specifically, Waymo alleges that its former employee, Mr. [Anthony] Levandowski, improperly downloaded thousands of documents related to Waymo’s driverless vehicle technology […]

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  • Gaming IP: Smart or Damaging the Entire System

    Here is an interesting case of gaming the IP system.  I believe this type of tactic hurts the IP system as whole even if we may disagree about the need for reforms. 

    The New York Times has an informative article titled, “How to Protect a Drug Patent?  Give It to a Native American Tribe.”  The article describes how Allergen, the pharmaceutical company:

    will pay the [Native American] tribe $13.75 million. In exchange, the tribe will claim sovereign immunity as grounds to dismiss a patent challenge through a unit of the United States Patent and Trademark Office. The tribe will lease the patents back to Allergan, and will receive $15 million in annual royalties as long as the patents remain valid.

    As discussed in the article, this is apparently a strategy to protect the patents from Inter Partes Review Proceedings at the United States Patent and Trademark Office.  As discussed in other posts, public universities have successfully claimed sovereign immunity under the 11thamendment of the U.S. Constitution from IPR Proceedings.  I doubt this strategy will last long.  I can understand how Allergen may think this may play well with the public because Native American tribes will receive much needed funding, but really?  This looks very bad.  Of course, folks are going to start asking what that funding is being used for.  

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  • Claim construction by any other name…

    By Jason Rantanen …is still claim construction in my book.  This is true even when the claim construction focuses less on the specific meaning of individual words or phrases and more on construing the invention as a whole. *** One of the most enjoyable things about teaching a course like Patent Law, which I’m doing […]

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  • Federal Circuit Affirms Dismissal of Complaint Seeking Declaratory Judgment

    The opinion, authored by Judge Moore and joined by Judges Reyna and Stoll, is Allied Mineral Products, Inc. v. Osmi, Inc., Stellar Materials, Inc. and Stellar Materials, LLC  Allied, headquartered in Ohio, sells products to two Mexican companies that distribute those products in Mexico.  Stellar sent letters to the Mexican firms accusing them of infringing Stellar’s Mexican patent; it later initiated patent litigation against those firms in Mexico.  Allied then filed an action in U.S. district court for a declaratory judgment that the corresponding U.S. patent is invalid, not infringed, and unenforceable.  The district court dismissed the complaint for lack of jurisdiction, and the Federal Circuit affirms:
    The Declaratory Judgment Act requires “a case of actual controversy.” 28 U.S.C. § 2201(a). There is no bright-line rule for whether a dispute satisfies this requirement, Prasco LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1336 (Fed. Cir. 2008), although the Supreme Court has articulated a number of relevant factors: 

    Our decisions have required that the dispute be definite and concrete, touching the legal relations of parties having adverse legal interests; and that it be real and substantial and admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts . . . . Basically, the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

    MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (quotations and alterations omitted). . . .

    The totality of the circumstances in this case does not rise to the level of a case of actual controversy. Declaratory judgment jurisdiction requires some affirmative act by the patentee. SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1381 (Fed. Cir. 2007). Stellar has not directed any actions towards Allied, nor has it litigated or threatened litigation in the United States or on its ’974 patent. All of Stellar’s conduct has been directed towards Allied’s customers Ferro and Pyrotek, unrelated Mexican entities, and that contact was limited to Stellar’s Mexican Patent and potentially infringing acts in Mexico. Stellar sent notice letters to the customers alone, and although Allied responded on behalf of its customers, Stellar never responded to Allied’s letter. Stellar then sued only the customers, not the manufacturer. Stellar also limited its actions to Mexico. Stellar filed suit in Mexico, suing for infringement of a Mexican patent under Mexican laws. It has not threatened or alleged infringement of the ’974 patent in the United States, much less filed suit. Stellar took no actions directed at Allied, no actions with regard to its ’974 patent, and no actions under U.S. patent laws.

    The court goes on to distinguish three other cases:  Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377 (Fed. Cir. 2013), in which the court had found no case or controversy despite some “veiled threats” of litigation and the patent owner’s prior history of litigating its patents; Arkema Inc. v. Honeywell International, Inc., 706 F.3d 1351 (Fed. Cir. 2013), in which a combination of German litigation and U.S. litigation, directed against the same defendant and over a related patent, “‘create[d] a sufficient affirmative act on the part of the patentee for declaratory judgment purposes’”; and Arris Group v. British Telecommunications PLC, 639 F.3d 1368 (Fed. Cir. 2011), in which the court held that “a manufacturer has standing to bring a declaratory action if: (1) the manufacturer is obligated to indemnify its customers in the event of an infringement suit; or (2) there is a controversy between the patentee and the manufacturer as to the manufacturer’s liability for induced or contributory infringement based on acts of direct infringement by the customers.”  Neither condition, the court says, is present here.
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