• Andrei Iancu Named US Patent And Trademark Office Director

    By a vote of 94-0, the United States Senate on 5 February confirmed California intellectual property litigator Andrei Iancu as next director of the US Patent and Trademark Office (USPTO). The new Under Secretary of Commerce for Intellectual Property is currently managing partner of Irell & Manella LLP’s Los Angeles firm. The patent and trademark communities wished Iancu luck but said there are many issues at the agency that need his attention.

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  • Can You Copyright a Pose?

    An interesting case caught my eye this week, and piqued my interest enough to explore further. In Folkens v. Wyland Worldwide the Ninth Circuit considered whether Wyland’s depiction of crossing dolphins copied from Folkens’s original. Below is a reproduction from the complaint, but it doesn’t really do them justice. Better versions of Folkens (pen and ink) and Wyland (color) highlight the similarities and differences. [UPDATED to include the closely related Rentmeester v. Nike]

    Folkens v. Wyland
    Folkens (left) v. Wyland (right)

    The differences between these two are relatively clear: coloring, “lighting,” background, and so forth. But there are undeniable similarities, and the primary similarity is the dolphin “pose,” which is strikingly similar. It is this similarity (and the Ninth Circuit’s treatment of it) that I’d like to explore. Nothing in this analysis, however, should be taken to mean that I think Folkens should necessarily win here. My concern is only with how the court got there, as I discuss below.

    This is all a form of non-literal copying, but the discussion begins with Burrow-Giles Litho. v. Sarony, which was a literal copying case. The question there was whether a photograph could be copyrighted. The court said yes. In particular,

    plaintiff made the same . . . entirely from his own original mental conception, to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression….

    This posing and other creative choice was sufficient to provide original expression. Professor Justin Hughes points out in his work that Sarony was well known for posing his subjects.

    Oscar Wilde

    After Burrow-Giles comes Gross v. Seligman, in which a photographer recreated a photograph some years later (the facts are a bit more complicated – the photographer sold the copyright and then recreated his own work – but the holding doesn’t depend on the particular facts). The court ruled that though there were differences between the pictures, the identical poses were enough to render the second a copy of the first.

    The identity of the artist and the many close identities of pose, light, and shade, etc., indicate very strongly that the first picture was used to produce the second. …. The eye of an artist or a connoisseur will, no doubt, find differences between these two photographs. The backgrounds are not identical, the model in one case is sedate, in the other smiling; moreover the young woman was two years older when the later photograph was taken, and some slight changes in the contours of her figure are discoverable. But the identities are much greater than the differences, and it seems to us that the artist was careful to introduce only enough differences to argue about, while undertaking to make what would seem to be a copy to the ordinary purchaser who did not have both photographs before him at the same time. In this undertaking we think he succeeded.

    This sounds like the photos were nearly identical, but a look at the actual photos shows that they weren’t that close. The backgrounds were different, the lighting was somewhat different, the model was posed with the cherry, and so forth. In other words, they were no more similar than, say, the dolphins in the images above.

    Grace of Youth
    Grace of Youth
    Grace of Youth v. Cherry Ripe
    Cherry Ripe

    This leads to Rogers v. Koons. In Rogers v. Koons, Koons endeavored to make a three-dimensional sculpture of a picture posed by Rogers. Here, too, there were some differences, but the copying was essentially admitted, and the similarities were clear and intentional.

    Rogers v. Koons
    Rogers (photo) v. Koons (sculpture)

    The court ruled that the posed dogs were protected, even when the other photographic elements were stripped away:

    Defendants do not challenge plaintiff’s ownership of a valid copyright, but assert instead that the portion of Rogers’ work allegedly infringed was not an original work of authorship protected under the 1976 Copyright Act. Since the law protects authors’ exclusive rights to their works, the cornerstone of that law is that the work protected must be original. … Elements of originality in a photograph may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved [citing Burrow-Giles]. To the extent that these factors are involved, “Puppies” is the product of plaintiff’s artistic creation. Rogers’ inventive efforts in posing the group for the photograph, taking the picture, and printing “Puppies” suffices to meet the original work of art criteria.

    We now come to the core of the defense here: can one protect a pose that’s simple or common? Koons tried this defense, and was rebuffed:

    We recognize that ideas, concepts, and the like found in the common domain are the inheritance of everyone. What is protected is the original or unique way that an author expresses those ideas, concepts, principles or processes. Hence, in looking at these two works of art to determine whether they are substantially similar, focus must be on the similarity of the expression of an idea or fact, not on the similarity of the facts, ideas or concepts themselves. It is not therefore the idea of a couple with eight small puppies seated on a bench that is protected, but rather Roger’s expression of this idea — as caught in the placement, in the particular light, and in the expressions of the subjects — that gives the photograph its charming and unique character, that is to say, makes it original and copyrightable.

    Thus, had appellant simply used the idea presented by the photo, there would not have been infringing copying. But here Koons used the identical expression of the idea that Rogers created; the composition, the poses, and the expressions were all incorporated into the sculpture to the extent that, under the ordinary observer test, we conclude that no reasonable jury could have differed on the issue of substantial similarity.

    This brings us to Folkens. Using these cases as a backdrop, it seems like we should ask whether the dolphin pose was original, whether the accused work used similar expression, etc. One interesting feature of all these opinions is the use of light. But to my (untrained) eye, the lighting is not that similar in Gross or in Rogers. And the lighting is somewhat similar in Folkens, but the similarities are due to the way light is refracted underwater. After all, Folkens went to a great deal of trouble to pose the dolphins in the particular manner depicted:

    Folkens contends that the dolphins here do not exhibit behavior shown in nature because the dolphins in the photos that Two Dolphins was based upon were posed by professional animal trainers in an enclosed environment. Folkens contends that Defendants offered no evidence that the crossing of two dolphins in this way occurs in nature….

    But the court never gets to these types of questions. Instead, the Ninth Circuit went in another direction, holding first that pose is not ordinarily copyrightable unless combined with something else:

    We note… that a collection of unprotectable elements—pose, attitude, gesture, muscle structure, facial expression, coat, and texture—may earn “thin copyright” protection that extends to situations where many parts of the work are present in another work.

    And the court goes on to rule that the dolphins posing here do not count, because dolphins may cross in nature:

    First, we observe that the fact that a pose can be achieved with the assistance of animal trainers does not in itself dictate whether the pose can be found in nature. For example, an animal trainer may be used to get a dog to sit still while a photograph is taken or a painting is done, but no one would argue that the position of a dog sitting was not an idea first expressed in nature. In that case, the trainer’s purpose was not to create a novel pose, but to induce the dog to hold that pose for a period of time. Similarly, here, the dolphin trainer got one dolphin to swim upwards while its photo was taken, and got another to swim horizontally while its picture was taken. Neither of these swimming postures was novel. The positioning of the dolphins by a trainer does not entitle Folkens to survive summary judgment.

    This phrasing, to me, turns the analysis on its ear. In Rogers, surely the photographer did not create novel pose, and simply got the dogs and people to hold a position they could have assumed in nature. Even more so in Gross or Burrow-Giles, where the poses were merely of people who could easily assume the positions at issue, and in fact may have done so in the past.

    Some of my colleagues describe this as a case of scenes a faire – elements common to the genre that should be free for all to use. But I wonder whether this argument proves too much. Taken to its extreme, then any pose by anyone would qualify – just about every non-radical pose is out there naturally, just waiting for someone to recreate and photograph or paint. Koons made a similar argument and lost; it wasn’t just people holding dogs–it was specific people holding specific dogs in a specific way.

    The court does recognize that there could be copying if there were other similarities:

    An artist may obtain a copyright by varying the background, lighting, perspective, animal pose, animal attitude, and animal coat and texture, but that will earn the artist only a narrow degree of copyright protection. There is no question that the other aspects of Two Dolphins and Life in the Living Sea, beyond the two dolphins crossing, are different—Life in the Living Sea is in color, includes a third dolphin, has different lighting, and includes several species of fish and marine plants.

    And just a couple weeks later, the 9th Circuit issued a very similar opinion in Rentmeester v. Nike, on a motion to dismiss, no less. Rentmeester took an iconic shot of Michael Jordan, one that we all recognize. Except it’s not the iconic shot – Nike recreated it, but the photographer chose a different angle, a different background, a different time of day, and Jordan assumed a slightly different pose. Nike used its pose to create the famous Jumpman logo that adorns Air Jordans.

    Rentmeester’s Photo Nike’s Photo

    In Rentmeester, the Court acknowledged the unique, unusual, and creative pose set up by Rentmeester, and cited Rogers v. Koons for the proposition that a photo need not be identical. But the Court went on to hold that a) the pose in itself is not copyrightable as an idea, and b) all the other differences in the photo were too great. The court notes many differences, time of day, lighting, background, height of the hoop, arm and leg positions, etc. These differences rendered the photos, as a matter of law, not copied.

    I tend to think that the analysis in Rentmeester is superior to that in Folkens. I’m also willing to concede (indeed, I agreed) that these are not similar other than the pose. But here is where I leave it – are the differences so stark that we can say there was no copying without resorting to a jury? In Folkens especially, the differences (to my undiscerning eye) seem no greater than the two images in Gross v. Seligman or the two works in Rogers v. Koons. As I note above, I’ve got no qualms if folks find that these two are different. But I think there are some real similarities here – enough that I’m not ready to say, “there’s nothing similar but the natural idea of crossing dolphins.”

    It may be that Gross and/or Rogers are decided wrongly on the facts (something some of my colleagues have suggested), and in fact the similarities there were great enough to render the second work non-copied. However, the different framing of the legal question in these cases is difficult to square. The idea that we ignore near identical poses with near identical subjects simply because the pose might occur in nature troubles me a bit.I’m glad that the court did not go in that direction in Rentmeester.

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  • Do Recent Decisions Signal a Change in Patent Owner’s Rights to Defend and Amend Claims in Post-Grant Proceedings?

    Ever since the introduction of AIA post-grant proceedings, many have questioned whether the procedural deck is stacked against patent owners.  Limits on making claim amendments, having to bear the burden of showing the validity of claims already issued, and being subjected to multiple serial attacks, certainly have made it seem so.  But have recent cases signaled the playing field may now be tipping ever so slightly in a patent owner’s favor?  Or are these decisions just an illusion?

    The post…

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  • Banner & Witcoff Elects Nine Shareholders

    Banner & Witcoff, Ltd., a national intellectual property law firm, announces the election of nine shareholders: Shambhavi Patel, Maurine L. Knutsson, Michael S. Cuviello, Azuka C. Dike, Craig W. Kronenthal, Justin M. Philpott, Gregory Israelsen, Jeffrey Chang, and Aaron Bowling.

    The post Banner & Witcoff Elects Nine Shareholders appeared first on IPWatchdog.com | Patents & Patent Law.

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  • PTAB Enters Sua Sponte Patent Eligibility Rejections

    We’ve written previously about ex parte decisions of the Patent Trial and Appeal Board (PTAB) affirming patent eligibility rejections that seem to be inconsistent with the USPTO’s Subject Matter Eligibility Guidance. Apparently, applicants should be wary about appealing any rejection of a diagnostic method claim, because the PTAB may enter sua sponte patent eligibility rejections…… Continue reading this entry

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  • PTAB Life Sciences Report

    By John Cravero — About the PTAB Life Sciences Report: periodically, we will report on developments at the PTAB involving life sciences patents. Mylan Pharmaceuticals, Inc. v. Sanofi Aventis Deutschland GmbH PTAB Petition: IPR2017-01526; filed June 5,…

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  • Welcome Andrei Iancu, USPTO Director

    Without dissent (94-0), the U.S. Senate has confirmed Mr. Andrei Iancu as Director of the U.S. Patent and Trademark Office and Undersecretary of Commerce for Intellectual Property.  In addition to administering the 10,000 person and $2 billion Federal Agency, Iancu will also serve as a primary adviser for the White House on Intellectual Property law issues — […]

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  • およそ/約(やく)




    $$ In the present embodiment, a single miniature lens with a focal length of about 1 mm and a diameter of 1 mm is used. / 本実施の形態では、およそ1mmの焦点距離および1mmの直径をもつ1つの小型レンズが使用されている。(USP6433483)

    $$ Typically the generator produces an output frequency of about 35 KHz at 14 volts peak to peak. / 代表的には、この発生器は14ボルトで約30KHzのピーク間出力周波数を発生する。(USP6031371)

    $$ Heat transfer to moving gas can be approximately described by: ##EQU1## / 移動ガスへの熱伝達は、以下でおおよそ示される。【数1】(USP6239957)

    $$ The gas pressure is low (approximately 1 torr or 1 mmHg) and the charge is of mercury and argon. / ガス圧力は低く(約1トール又は1mmHg)、かつその充填は水銀及びアルゴンである。(USP6507030)

    $$ Typically, such a sealing element will be in the range from 50 to 100 μm thick, preferably approximately 75 μm thick. / 通常、このようなシーリング要素は、50-100μm厚であり、好適には約75μm厚である。(USP6177504)

    $$ However when DPHPC was added at 4 mM to serum containing SAP and CRP both at around 4 μM, the MIRA CRP value was reduced by 44%. / しかし、およそ4μMでSAPとCRPの両方を含む血清に4 mMでDPHPCを添加した場合には、MIRA CRP値は44%まで下がった。(USP7615543)

    $$ For the sake of simplicity a 1:1.2 ratio has been selected for the drawing; the present invention is more typically concerned with a ratio around 1:1.001. / 簡単のために、1:1.2比が図において選択され;本発明はもっと典型的にはおよそ1:1.001の比に関わる。(USP6480232)

    $$ The power required to turn the brush bar under normal operating conditions would be around 15W, or perhaps less. / この場合、通常の稼動状態でブラシバーを回転させるために必要な電力は約15Wか、それ以下である。(USP6691849)

    $$ …where R is the dimension of the system and λ is the disclination core radius, and is typically the order of a few molecular lengths (circa 100Å)…. / ここで、Rはシステムの寸法であり、λはディスクリネーション・コア半径であり、これは一般的に、数個の分子の長さ(およそ100Å)のオーダーである。(USP7053975)

    $$ Cellulose sponge (25 g; in the form of a sheet roughly 5 mm thick, as used for domestic cleaning purposes; bulk density 0.08 g/ml) was placed in a 1000 ml flask. / セルローススポンジ(25g、約5mmの厚さのシートの形態、家庭用洗浄目的で使用されるもの、バルク密度0.08g/ml)を1000mlフラスコ中に入れた。(USP6548730)

    $$ In each case, the split 453 runs across the width of the tape, roughly halfway along it. / それぞれの場合に、分割453はテープの幅方向で、おおよそ半分のところで行われる。(USP6833656)


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  • Exposing Children to Innovation More Likely to Lead to Innovation than Financial Incentives?

    In a fascinating article titled, Who Becomes an Inventor in America? The Importance of Exposure toInnovation, economists Alexander M. Bell, Raj Chetty, Xavier Jaravel, Neviana Petkova, and John Van Reenen, argue that exposing children to innovation may be more likely to lead to innovation than financial incentives such as reducing tax rates.  The authors provocatively ask whether we are “losing Einsteins.”  

    Dywer Gunn’s explanation of the article appears in The NBER’s Digest and states:

    Children who grow up in particularly innovative geographic areas, or who are exposed to inventors via family connections, are more likely to become inventors.

    American inventors are disproportionately likely to be white men who grew up in financially successful families. In Who Becomes an Inventor in America? The Importance of Exposure to Innovation (NBER Working Paper No. 24062), Alexander M. Bell, Raj Chetty, Xavier Jaravel, Neviana Petkova, and John Van Reenen find that children from families in the top 1 percent of the income distribution are 10 times more likely to become inventors than those from families in the bottom 50 percent, and that over 80 percent of 40-year-old inventors are male.

    The study examines three possible explanations for the demographic disparities: differences in genetic ability, differences in career preferences, and differences in the financial or human capital constraints faced by different demographic groups.

    The researchers find that neither innate ability nor financial constraints fully explains the disparities. Using data from the New York City public schools, they find that while third grade math test scores are predictive of the probability of securing a patent as a young adult, test score differences explain “less than one-third of the gap in innovation between children from high- vs. low-income families.” Among students who score well on third grade math tests, students from low-income families are significantly less likely to become inventors than their wealthier peers. While the explanatory power of test scores grows over time, the researchers estimate that only 5.7 percent of the demographic gap in who becomes an inventor can be explained by differences in ability at birth. And they find financial constraints faced during childhood likewise do not explain the gap, as students from low- and high-income families who attend colleges with large numbers of inventors become inventors at similar rates.

    Instead, the researchers point to a powerful causal exposure effect. Using nationwide data on where an individual grew up and patent awards in early adulthood, they find that children who grow up in particularly innovative geographic areas, or who are exposed to inventors via family connections, are more likely to become inventors. This finding applies even among technology categories. Among people living in Boston, those who grew up in Silicon Valley are especially likely to patent in computers, while those who grew up in Minneapolis — which has many medical device manufacturers — are especially likely to patent in medical devices. Moreover, children whose parents hold patents in a particular subclass, such as amplifiers, are more likely to obtain a patent in that same subclass than in another. There is also a strong gender-specific exposure effect: women are more likely to patent in a technology class if they were exposed as children to female inventors who held patents in that same type of technology.

    The researchers estimate that if young girls were exposed to female inventors at the same rate as young boys are currently exposed to male inventors, the gender gap in invention rates would be halved. More broadly, if women, minorities, and children from low-income families were to invent at the same rate as white men from high-income (top 20 percent) families, the rate of innovation in America would quadruple.

    I wonder if other countries have started offering innovation classes to children at a young age.  In the United States, there has been quite a bit of innovation in the primary and secondary school systems for several reasons, including the growing popularity of home schooling and charter schools as alternatives to the public school system.  I do know that there are field specific charter schools in California.  For example, there is one in Sacramento that is focused on the arts, relatively broadly defined.  There is also one focused on law.  And, even our public school system in Sacramento has a School of Engineering and Sciences.  [Hat Tip to Professor Paul Caron’s TaxProf Blog.] 

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  • Federal Circuit Affirms Finding of Willfulness, Vacates and Remands Award of Treble Damages

    The decision, which issued this morning, is WCM Industries, Inc. v. ICM Corp., nonprcedential opinion by Chief Judge Prost (joined by Judges Wallach and Taranto).  WCM owns three patents relating to an improvement in bathtub overflow assemblies.  The defendant marketed a product (referred to here as the “Classic Product”) that allegedly infringed.  After WCM filed suit, the defendant stopped making that product and instead sold a “Revised Classic Product,” which the plaintiff believed also infringed.  The jury verdict concluded that the Classic Product infringed literally, contributorily infringed, and induced infringement, and that the Revised Classic Product infringed under the doctrine of equivalents, contributorily infringed, and induced infringement.  The jury also found that a reasonable royalty rate was $1 per infringing unit of both products, and that the infringement was willful.  The district judge granted a JMOL on the doctrine of equivalents but concluded that the Revised Classic Product nevertheless indirectly infringed, and trebled the award of actual damages from $1,383,978 to $4,154,934.  (It did conclude that there was no willful infringement of one of the three patents in suit, because it issued after the complaint was filed, but that didn’t affect the damages award.)  On appeal, the Federal Circuit affirms the judgment on liability, finding however that the defendant did infringe under the doctrine of equivalents as well as indirect infringement.  Focusing on remedies, the court also affirms as to the willfulness of the infringement of the two other patents in suit, but remands for further consideration of the amount, if any, of an appropriate enhancement.
    On willfulness, the defendant argued that it lacked knowledge of the patents in suit until it was sued for infringement, and that as a result it couldn’t be held liable for willful infringement.  The Federal Circuit expresses doubt that a lack of knowledge until the point at which one is sued necessarily means that one is not a willful infringer (which could be a big deal in other cases), though it also states that there was sufficient evidence for the jury to conclude that the defendant had knowledge before that (which would make the decision less of a blockbuster).  See what you think:
    IPS’s principal argument on appeal is that the district court erred in refusing to grant judgment as a matter of law of no willfulness because there is no evidence that IPS had knowledge of the patents before the lawsuit began. In support, IPS largely relies on State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226 (Fed. Cir. 1985), and Gustafson, Inc. v. Intersystems Industrial Products, Inc., 897 F.2d 508 (Fed. Cir. 1990). In State Industries, the court concluded that “[t]o willfully infringe a patent, the patent must exist and one must have knowledge of it.” 751 F.2d at 1236. Accordingly, the court held that the defendant’s infringement in that case was not willful because, among other reasons, its first notice of the existence of the issued patent came with the filing of the infringement suit against it. Id. Similarly, Gustafson held that “a party cannot be found to have ‘willfully’ infringed a patent of which the party had no knowledge.” 897 F.2d at 511.

    We find IPS’s arguments unpersuasive. First, this court has already held that State Industries does not establish a per se rule, as IPS contends, but rather, “is in harmony with our prior and subsequent case law, which looks to the ‘totality of the circumstances presented in the case.’” . . . The Gustafson opinion itself also recognizes that “[w]hether an act is ‘willful’ is by definition a question of the actor’s intent, the answer to which must be inferred from all the circumstances.” 897 F.2d at 510–11 (emphasis added). Second, unlike in State Industries and Gustafson, here WCM provided sufficient evidence for a reasonable jury to conclude that IPS did know of WCM’s patents as they issued, if not earlier. . . . Not to mention, it is undisputed that IPS had knowledge of the ’220 patent and the ’970 patent at least as of the date the first Colorado suit [preceding the instant suit] was filed, about a month before this action was initiated.

    In support of the jury’s verdict, WCM points to the evidence of record. First, although Mr. Casella, President of IPS’s Plumbing Division, knew that AB&A did not employ engineers or full-time product developers to create the Classic Product, he did not conduct an investigation into how AB&A developed the Classic Product during the due diligence period of the acquisition [of AB&A by IPS]. Additionally, IPS was aware of a 2010 patent lawsuit between WCM and AB&A at the time of the acquisition. Mr. Humber, IPS’s employee, testified that he had monitored WCM’s products for decades and possessed catalogs and other literature indicating that WCM’s products were marked with “patent pending.” . . .
    WCM also introduced evidence of what it refers to as “a culture of copying at IPS,” including testimony from Mr. Kirk, former IPS Product Manager, regarding an email copying Gary Clarke, IPS’s Vice-President of Marketing and Engineering, in which Mr. Kirk asked Mr. Humber about one of WCM’s Watco drains. WCM provided evidence at trial that Mr. Ball had meticulously devised WCM’s Innovator Product and that a rational explanation for the Classic Products’ identical measurements and compatibility with WCM’s Innovator Product was that AB&A had copied the Innovator. 
    In sum, WCM argues that the jury had more than enough evidence to conclude that IPS knew of WCM’s patents as they issued (if not earlier) and that the risk of infringement was known to IPS or so obvious that it should have been known. IPS continues to dispute several of these facts and what inferences might be drawn from them. For example, IPS points to Mr. Casella’s testimony that IPS did not have any notice of WCM’s asserted bath waste and overflow patents. The jury was free to decide, however, whose evidence it found more compelling on the question of willfulness and it found in WCM’s favor. . . (pp. 18-21).
    On the issue of damages enhancement, however, the Court of Appeals believes that the district court gave some of the Read v. Portec factors short shrift, even though the factors themselves are “not mandatory” (pp. 22-25):
    The first factor is “whether the infringer deliberately copied the ideas of another.” Read Corp., 970 F.2d at 827. The district court concluded that this factor weighed in favor of enhancing damages because there was evidence of copying on IPS’s part. In particular, the district court cited to testimony from Mr. Kirk, former IPS Product Manager, regarding an email copying Gary Clarke, IPS’s Vice-President of Marketing and Engineering, in which Mr. Kirk asked Mr. Humber about one of WCM’s Watco drains. That product, however, was not WCM’s Innovator product in this suit. Therefore, while there is evidence of a possible “culture of copying” at IPS that weighs in favor of enhancement, given that the email does not refer to a product involved in the litigation, this factor should not be weighed very strongly in favor of enhancing damages.

    The second factor is “whether the infringer, when he knew of the other’s patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed.” Id. The district court found that this factor was “perhaps most important[]” and that IPS’s failure to investigate the asserted patents weighed strongly in favor of enhancing damages. J.A. 38. The evidence that the court cited in support of its conclusion, however, involves patents or products not at issue in this case. For example, the court cited to evidence that IPS knew that WCM’s products in general were patent protected and that IPS did not investigate certain patents involved in a different lawsuit. Thus, based on the record before the district court, this factor only slightly favors enhancing damages. The evidence certainly cannot support the district court’s conclusion that this factor was the most important and that it weighed strongly in favor of enhancing damages.

    The third factor is “the infringer’s behavior as a party to the litigation.” Read Corp., 970 F.2d at 827. The court found that IPS did not engage in litigation misconduct and properly determined that this factor counseled against enhancement. The fourth and fifth factors are the “[d]efendant’s size and financial condition” and the “[c]loseness of the case.” Id. Despite IPS’s arguments to the contrary on appeal, the district court’s analysis of these factors is also reasonable. The district court determined that IPS’s size and financial condition weigh in favor of enhanced damages and that the closeness of the case was also in WCM’s favor because the jury verdict was not a close call and the evidence strongly supported WCM’s case.

    The court did not analyze the sixth factor, which is the “[d]uration of the defendant’s misconduct.” Id. This factor would likely weigh against enhancement. For example, the patents issued only a short time before the filing of the lawsuit. Nor did the court analyze the seventh factor, “[r]emedial action by the defendant,” which may also weigh slightly against enhancement because IPS attempted to take remedial action (albeit ineffectively) when it modified its Classic Product and began selling its Revised Product during the pendency of this litigation. See id. . . .  
    In sum, the district court clearly erred when it concluded that the second factor weighed strongly in favor of enhancement. Compounding this error, the district court did not appropriately weigh the third factor and other potentially mitigating factors, such as the sixth and the seventh factors, against the enhancement of damages. As WCM itself stated to the district court, when only a subset of factors weigh in favor of enhanced damages a court should award less than treble damages. Accordingly, we conclude that the district court made a clear error of judgment amounting to an abuse of discretion in deciding to award the maximum amount of damages.

    Although the district court “may increase the damages up to three times the amount found or assessed,” 35 U.S.C. § 284 (emphases added), where the maximum amount is imposed, “the court’s assessment of the level of culpability must be high,” Read Corp., 970 F.2d at 828. The district court is also particularly obligated to explain the basis for the award where it awards treble damages. Id. Here, the district court provided only a single conclusory sentence as to why it was awarding the maximum amount. J.A. 41 (“The Court further finds, based on the egregious nature of IPS’s conduct, that treble damages are appropriate.”). We therefore vacate the district court’s decision to award treble damages and remand for the district court to reconsider, consistent with this opinion, the amount by which the damages should be enhanced, if at all.6/
    6/Although the jury was not asked to decide the total number of infringing units sold by IPS on a product-by-product basis, on remand, in determining how much the damages should be increased, if at all, the district court may also consider whether the degree of the IPS’s culpability might be different for sales of the Classic Product as compared to sales of the Revised Product.
    Going back to the issue of whether it is necessary to a finding of willfulness that the defendant know of the patent before infringing, perhaps this opinion will lend some support to Professor Dmitri Karshtedt’s argument that courts should take into account whether the defendant was reckless in not searching for relevant patents in advance.  See Karhstedt, Enhancing Patent Damages, forthcoming UC Davis Law Review (available here).
    *                   *                    *
    In other news, on FOSS Patents Florian Mueller has a very interesting post about a U.S. Huawei v. Samsung FRAND dispute pending in the Northern District of California, in which Samsung has filed a motion to enjoin Huawei from enforcing the injunction the court in Shenzhen recently granted it against Samsung.  For previous discussion of the Chinese case on this blog, see here.
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  • MedImmune prevails over Abbvie at CAFC in a Humira case

    In a case related to Humica, the CAFC affirmed ED Va:

    AbbVie, Inc., and AbbVie Biotechnology Ltd.
    (“AbbVie”) filed suit in the Eastern District of Virginia
    against MedImmune Limited (“MedImmune”), seeking a
    declaratory judgment that U.S. Patent No. 6,248,516 (“the
    ’516 patent”) is invalid. The district court determined
    that it lacked jurisdiction under the Declaratory Judgment
    Act, 28 U.S.C. §§ 2201–02, and alternatively that it
    would not exercise jurisdiction if it existed, and it granted
    MedImmune’s motion to dismiss. We affirm.

    Appellant Abbvie won on one point:

    The district court erred in holding that it lacked declaratory-judgment
    jurisdiction on the basis that there is
    no controversy as to infringement of the ’516 patent. (…)

    If properly presented, such a contractual dispute
    could confer declaratory-judgment jurisdiction. The
    Supreme Court has held repeatedly that contractual
    disputes can be the subject of a declaratory action. E.g.,
    MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 125
    (2007) (“All we need determine is whether petitioner has
    alleged a contractual dispute.”); Freeport-McMoRan, Inc.
    v. K N Energy, Inc., 498 U.S. 426, 426–29 (1991) (per
    curiam) (finding federal diversity jurisdiction in declaratory
    action concerning breach of contract); Skelly Oil Co.
    v. Phillips Petroleum Co., 339 U.S. 667, 674 (1950) (same);
    Aetna Life Ins. of Hartford, Conn. v. Haworth, 300 U.S.
    227, 242 (1937) (“The dispute relates to legal rights and
    obligations arising from the contracts of insurance.”). And
    it has held that declaratory-judgment jurisdiction extends
    to contractual disputes that turn on issues of patent
    infringement and invalidity. MedImmune, 549 U.S. at


    AbbVie’s problem is that it did not seek a declaration
    of its contractual obligations. Rather, AbbVie’s complaint
    only sought a declaration of invalidity with respect to the
    ’516 patent. And as MedImmune argues and the district
    court held, such a declaration would not actually resolve
    the parties’ contractual dispute


    We concluded that “simply eliminating
    one barrier [to resolving the dispute] is sufficient
    for declaratory jurisdiction, so long as litigation is also
    pending that could eliminate the other barriers.” Id.;
    accord Caraco Pharm. Labs., Ltd. v. Forest Labs., Inc.,
    527 F.3d 1278, 1288, 1293 (Fed. Cir. 2008).
    Here, AbbVie has no other pending litigation that
    would conclusively resolve its contractual dispute with
    MedImmune. Without taking at least that step, in either
    the American or British courts, it cannot establish declaratory-judgment
    jurisdiction over the question of invalidity.
    Accordingly, the judgment of the district court
    dismissing the action without prejudice is affirmed.

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