The copyright committee of the World Intellectual Property Organization is meeting at the end of May with some complex issues on the agenda that may see new approaches for moving them forward, including the protection of broadcasting organisations, and…Continue Reading ...
How the Federal Circuit could rule that Alice did not change the law governing § 101 is a bit of a mystery. Applying the same two-step test seems a convenient way of dodging reality. At a time when there is real momentum gathering for a legislative solution to § 101 why did the Federal Circuit choose to perpetuate a myth that Alice did nothing to change the law? Outcomes are unquestionably different as the result of Alice, and if outcomes are different how exactly is it possible that the law…
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What would you think if I told you that anyone from France or China or Brazil that was just thinking about some legal action in their country could come here and easily force discovery from a U.S. company, even though they couldn’t dream of getting the same information through their home courts? Crazy, right? That is exactly what has resulted from a law that’s so obscure it doesn’t even have a name, so we call it by its legal citation: 28 U.S.C. Section 1782.
The post The Biggest Trade…
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There is a dangerous movement afoot; the idea that registration of your images on the blockchain is a cheap and simple alternative to registration with the United States Copyright Office. It is not…. While the costs of registration with the US Copyright Office can be significant, especially if you are shooting thousands of photos, don’t be deluded into thinking that the blockchain is some cheap cure-all for legally protecting your copyrighted work. The blockchain is not a government…
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How will Artificial intelligence (AI) change the way we conduct business in Africa and will it make people redundant or irrelevant when it comes to jobs on the continent?This is the question posed by Tyler Golato (InterProVise) and Rob Green (GRM …Continue Reading ...
By Kevin E. Noonan — Hiram Bentley Glass and classical geneticists of the Twentieth Century elucidated some of the ways that genetics could inform regarding human populations and their history, using observations like genetic drift (famously, among th…Continue Reading ...
by Dennis Crouch
Disc Disease Solutions v. VGH Solutions (Fed. Cir. 2018) [17-1483.Opinion.4-27-2018]
Disc Disease’s asserted patents relate to an inflatable air-brace for spinal support. U.S. Patent Nos. 8,012,113 and 7,618,509. The accused infringer sells three different inflatable spinal braces. However, after considering the complaint filed by Disc Disease, the district court dismissed the case with prejudice for failure to state a claim upon which relief can be granted (R.12(b)(6)). In the process, the district court rejected Disc Disease’s request to file a first amended complaint.
The timing of the complaint filing is somewhat important. It was filed on November 30, 2015 — the day before the rules of Civil Procedure were officially amended to eliminate the short-form patent complaint (Form 18). Prior to that change, “Form 18 in the Appendix of Forms provided a form adequate to plead a direct infringement patent claim. See In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1334 (Fed. Cir. 2012).” Although the rules of Civil Procedure liberally allow plaintiffs to file a first-amended-complaint, the court here held that Disc Disease’s request to amend was not filed in a timely fashion and thus was appropriately rejected.Continue Reading ...
"an apparatus and a method for V-ing"のパターンは用いられないようである
$$ The invention relates to apparatus and methods for controlling equipment and to a message packet for use with such apparatus and methods. / 本発明は制御装置用装置及び方法に関し、より詳細には該装置及び方法を使用するメッセージパケットに関する。(USP5537605)
$$ The present invention relates to apparatus and methods for use in providing a security check.(USP6549118)
$$ This invention relates to plasma processing apparatus and methods. / プラズマ加工の装置と方法本願発明はプラズマ加工の装置と方法とに関する。(USP6458239)
$$ This invention relates to spectroscopic apparatus and methods.(USP5442438)
$$ This invention relates to apparatus and methods in which spectroscopy is used to analyse a sample, for example making use of the Raman effect.(USP5510894)
$$ The present invention relates to an apparatus and method for detecting fluids, and relates particularly to an apparatus and method for detecting fluids by observing the change in electrical behaviour of a sensor in the presence of such fluids.(USP6317696)
$$ In particular, the invention provides apparatus and methods enabling linking between the Internet WWW service and a general purpose messaging system. / 特に、本発明は、インターネットＷＷＷサービスと汎用メッセージング･システムとの間のリンクを可能にする装置及び方法を提供する。(USP6336135)
$$ In accordance with the present invention, an apparatus and method for reducing noise in a vehicle is provided.(USPA02076059)
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The oral argument of the day is from Finjan v. Blue Coat. You can listen to the oral argument here: The Federal Circuit opinion is available [here]. The independent claim at issue reads: 1. A method comprising: receiving by an inspector a Downloadable; generating by the inspector a first Downloadable security profile that identifies […]Continue Reading ...
This morning the Federal Circuit issued its opinion in Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics Am., Inc., f/k/a/ Intersil Corp., opinion by Judge Taranto (joined by Judges Dyk and Bryson). The facts are somewhat complex, but to summarize plaintiff TAOS sued defendant Intersil for patent infringement and (under Texas law) for trade secret misappropriation, breach of contract, and tortious interference with prospective business relations. The jury returned a verdict for the plaintiff on all of these claims “and awarded (1) $73,653.51 as a reasonable royalty for patent infringement; (2) $48,783,007 in disgorgement of Intersil’s profits and $10 million in exemplary damages for trade secret misappropriation; (3) $12 million as a reasonable royalty for breach of contract; and (4) $8 million in lost profits and $10 million in exemplary damages for tortious interference. . . . The jury also found Intersil’s infringement to be willful” (p.7). The trade secret issues were premised on the alleged misappropriation of three alleged trade secrets, and on appeal the Federal Circuit concludes that there was substantial evidence for the misappropriation of only of one of the three. For this reason, and also because the award of profits covered profits earned on certain sales that occurred after the subject information was no longer a trade secret, the court vacates the award of profits and exemplary damages (pp. 19-22). In addition, the court concludes that there is no right to trial by jury on the issue of disgorgement (discussed below). It also concludes that at least some portion of the reasonable royalty awarded for the infringement of TAOS’s patent was duplicative of the award for trade secret misappropriation, so it remands for a reconsideration of the patent damages award as well, and for reconsideration of whether an award of enhanced patent damages may be appropriate. Finally, the court vacates and remands for reconsideration the district court’s denial of a permanent injunction, and its judgment that the awards for breach of contract and tortious interference were duplicative.This blog focuses on patent remedies, and since 1946 awards of infringer’s profits have not been available in the U.S. (as they are in many countries) for the infringement of a utility patent. But awards of profits are available in the U.S. for trade secret misappropriation, as this case demonstrates, as well as under appropriate circumstances for copyright and trademark infringement, and–as readers know from the Supreme Court’s 2016 decision in Samsung v. Apple–design patent infringement. And while I’m not a Seventh Amendment expert, I’m inclined to find the Federal Circuit’s analysis of why there is no right to trial by jury on the disgorgement of profits for trade secret misappropriation (1) persuasive, and (2) equally applicable to other IP claims, including design patent infringement. Indeed, I’ve long suspected that there might not be a right to a jury determination of the profits available for the infringement of a design patent, and have been surprised that few others so far (to my knowledge) have taken up this question. Anyway, see what you think–here is an excerpt from the court’s analysis of the jury issue (pp. 24-35):
In some cases, a plaintiff seeking disgorgement as a remedy for trade secret misappropriation might prove that this measure of relief, though focused on the defendant’s gains, is good evidence of damages in the form of the plaintiff’s losses or of a reasonable royalty for use of the secret. But this is not such a case. In the trial court here, TAOS sought disgorgement of Intersil’s profits as such, not based on any evidence or argument that such profits soundly measured, and hence were a case-specific proxy for, TAOS’s losses or a reasonable royalty. . . .
. . . The question in this case is whether disgorgement of the defendant’s profits, considered on its own terms, without proof that it was a sound measure of the plaintiff’s harm, was available at law in 1791 for this sort of wrong. . . .
TAOS has not shown that such disgorgement was available. And there are strong reasons to think that it was not.
Disgorgement of a defendant’s gains is often called “restitution.” See, e.g., Kokesh, 137 S. Ct. at 1640; Great-West Life & Annuity Ins. Co. v. Knudson, 534 U.S. 204, 215 (2002); Harris Tr. & Sav. Bank v. Salomon Smith Barney Inc., 530 U.S. 238, 250 (2000). The Supreme Court has made clear that, “[i]n the days of the divided bench, restitution was available in certain cases at law, and in certain others in equity.” Great-West Life, 534 U.S. at 212 (citing sources). . . .
Examples are informative. Restitution could be obtained in equity when the underlying cause of action was equitable (e.g., a claim of breach of a trustee’s fiduciary duties) or when a party sought a specific equitable remedy, such as a constructive trust or lien or (in some circumstances) accounting for profits. See Great-West Life, 534 U.S. at 213–16 & n.2; Sereboff, 547 U.S. at 363–68. The Court has referred to disgorgement as equitable in various circumstances, often as ancillary to a request for an injunction. . . . On the other hand, in some circumstances, a “plaintiff had a right to restitution at law through an action derived from the common-law writ of assumpsit.” Great-West Life, 534 U.S. at 213.
Here, “the basis for [TAOS’s] claim,” id., is trade secret misappropriation. Claims for that wrong were first recognized in the American and English equity (or chancery) courts in the nineteenth century. . . .
Once claims of trade secret misappropriation came to be accepted in the Nineteenth Century, several decisions quickly recognized that a plaintiff properly asserting jurisdiction in equity could also request incidental monetary relief in the form of disgorgement (restitution) of the defendant’s profits based on the defendant’s past use of the trade secret. . . . In contrast, we have been pointed to no sound basis for concluding that, for this wrong, the law courts would have awarded disgorgement of the defendant’s profits, notwithstanding that the law courts, through a writ of assumpsit, sometimes awarded such relief for certain other wrongs.
We also consider appropriate analogues from 1791 in the Seventh Amendment historical inquiry. . . .
Consider patent infringement. Congress never authorized quasi-contract (legal) actions based on patent infringement. See 7 Donald S. Chisum, Chisum on Patents § 20.02 (2011). Originally, damages were authorized through traditional actions on the case. . . . No legal action for disgorgement of profits was recognized. See Coupe v. Royer, 155 U.S. 565, 582 (1895); Tilghman v. Proctor, 125 U.S. 137, 143–46 (1888). That remained true when a reasonable royalty came to be recognized as an available remedy, starting in the second half of the Nineteenth Century, and then definitively in Dowagiac Manufacturing Co. v. Minnesota Moline Plow Co., 235 U.S. 641, 648 (1915), and a subsequent statute, Pub. L. No. 67-147, § 8, 42 Stat. 389, 392 (1922). Not long before Congress abolished disgorgement of defendant’s profits as a patent remedy, see Aro Mfg. Co. v. Convertible Top Replacement Co., Inc., 377 U.S. 476, 504–05 (1964) (describing 1946 amendment), the Supreme Court observed that “recovery of profits . . . had been allowed in equity both in copyright and patent cases as appropriate equitable relief incident to a decree for an injunction,” Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390, 399 (1940) (emphasis added); see Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 259 (1916) (trademark case following patent cases, Root and Tilghman, to recognize that equity could award disgorgement of profits where equity jurisdiction otherwise attached, typically because the plaintiff had a right to an injunction).
Certain scholars furnished an explanation for the law courts’ not providing disgorgement of the defendant’s profits for patent infringement, even though patent infringement sounded in tort, see Schillinger v. United States, 155 U.S. 163, 169 (1894), and restitution through a writ of assumpsit was broadly available for torts, including for the improper taking or use of intangible property, based on a theory of a contract implied in law (quasi-contract) . . . Citing the facts that another’s use of a patent-protected idea does not prevent a patent owner from also using the invention and that all the infringer has taken at the owner’s expense is the owner’s right to exclude the infringer, these scholars reasoned that “the true measure of recovery” in restitution in an action in assumpsit based on patent infringement would not be “the profits actually reaped by the infringer, as in the case of a suit in equity for an injunction and accounting, but the value of the use of the invention—ordinarily determined by reference to the royalty or price paid for such use by licensees.” . . . On that rationale, they said, the assumpsit measure of relief for this tort was limited to a reasonable royalty. . . .
The apparent fact is that for patent infringement, disgorgement of profits was not historically available at law. As for copyright and trademark infringement, we have seen no support for concluding that disgorgement of profits was available at law for those wrongs. . . .
We see no basis for drawing a different conclusion for TAOS’s request for disgorgement for trade secret misappropriation in this case, based on Intersil’s improper taking and use of TAOS’s intellectual property in the photodiode structure. For Seventh Amendment purposes, claims for patent, copyright, or trademark infringement are appropriate analogues of the trade secret claim here. From all we have seen, no disgorgement remedy was available at law in 1791 for the former claims. We conclude that no such remedy would have been available at law for the trade secret misappropriation here, either.The court then goes on to distinguish the Supreme Court’s 1962 Seventh Amendment decision in Beacon Theatres, concluding that in that case the plaintiff was entitled to a trial by jury because it was seeking compensatory damages. (A couple of pages earlier, the court cites my former colleague Mark Thurmon’s paper Ending the Seventh Amendment Confusion: A Critical Analysis of the Right to a Jury Trial in Trademark Cases, 1 Tex. Intell. Prop. L.J. 1 (2002), which as I recall reached the same conclusion.)Anyway, it certainly seems to me, based on the above, that any argument there is a right to a jury determination on the disgorgement of the infringer’s profits for design patent infringement now rests on thin ice. Do readers agree or disagree? Sarah Burstein, what do you think?Finally, in a somewhat related vein, I’d note that the Federal Circuit yesterday heard oral argument in a case brought against the U.S. government for the use of a patented invention, Hitkansut LLC v. U.S., Case No. 17-1853. Such claims are litigated not under the Patent Act as such but under a federal statute, 28 U.S.C. § 1498, which requires the federal government to pay “reasonable and entire compensation for such use and manufacture.” Cases are brought tin the U.S. Court of Federal Claims, and there are no juries. Anyway, I had not been following this case, but I saw a reference to it this morning in Jacob Sherkow’s write-up on the Written Description Blog of the oral argument in the appeal from the PTAB’s decision in the CRISPR patent interference. Toward the end of his very interesting post on the CRISPR matter, Professor Sherkow notes that the court also heard argument in Hitkansut, which presents “a simple question: does § 1498 provide for prospective remedies like running [ongoing] royalties? Prospective remedies in private infringement cases don’t have the greatest statutory grounding. But this makes running royalties in § 1498 cases especially suspect because the statute is both jurisdictional in nature and written in the past tense.” I agree that that is an interesting question, and one that hadn’t occurred to me either, so I will be eager to see how the Federal Circuit decides it. It’s a bit reminiscent of the German case I blogged about yesterday in which the court awarded a royalty for a compulsory license to use the drug Isentress, because § 1498 cases functionally are compulsory licensing proceedings whereby the government takes a license for its own use. But I mention the matter here because (again in my view) there is a lingering question about whether awards of ongoing royalties in private infringement cases are legal (thus requiring a jury) or equitable (not requiring a jury). The Federal Circuit has held to the latter view, but on at least one occasion Judge Moore has seemed to suggest the opposite (see discussion here), and I’m honestly not sure which view is correct.Continue Reading ...
Update (May 9, 2018): On the question raised in the last paragraph above, I see that the Federal Circuit today affirmed Hitkansut without opinion. So no definitive answer as to whether §1498 provides for prospective remedies such as ongoing royalties.
The district court erred when it
dismissed the complaint for failure to state a claim. We
reverse the district court’s grant of the motion to dismiss
and remand for further proceedings.
This case, in part, relates to “Form 18″:
On November 30, 2015, Disc Disease Solutions Inc.
(“Disc Disease”) filed a complaint for patent infringement
alleging that VGH Solutions’ products infringe the ’113
and ’509 patents. The complaint specifically identified
VGH Solutions’ products and alleged that the products
meet “each and every element of at least one claim of the
’113 [or ’509] Patent, either literally or equivalently.” J.A.
54–55. Disc Disease attached to the complaint the asserted
patents and photographs of the accused products.
The following day, on December 1, 2015, amendments
to the Federal Rules of Civil Procedure took effect, abrogating
Rule 84 and Form 18. Supreme Court of the
United States, Order Regarding Amendments to the
Federal Rules of Civil Procedure (U.S. Apr. 29, 2015).1
The Supreme Court’s abrogation order states that the
amendments “shall govern in all proceedings in civil cases
thereafter commenced and, insofar as just and practicable,
all proceedings then pending.” Id. Rule 84 provided
that “[t]he Forms in the Appendix suffice under these
rules and illustrate the simplicity and brevity that these
rules contemplate.” Fed. R. Civ. P. 84 (2007) (abrogated,
eff. Dec. 1, 2015). Form 18 in the Appendix of Forms
provided a form adequate to plead a direct infringement
The CAFC wrote:
The district court determined that Disc Disease failed
to “explain how Defendants’ products infringe on any of
Plaintiff’s claims” because it “merely alleges that certain
of Defendants’ products ‘meet each and every element of
at least one claim’ of Plaintiff’s patents.” Disc Disease,
2016 WL 6561566, at *3. We disagree. Disc Disease’s
allegations are sufficient under the plausibility standard
of Iqbal/Twombly. This case involves a simple technology.
The asserted patents, which were attached to the
complaint, consist of only four independent claims. The
complaint specifically identified the three accused products—by
name and by attaching photos of the product
packaging as exhibits—and alleged that the accused
products meet “each and every element of at least one
claim of the ’113 [or ’509] Patent, either literally or equivalently.”
J.A. 54–55. These disclosures and allegations
are enough to provide VGH Solutions fair notice of infringement
of the asserted patents. The district court,
therefore, erred in dismissing Disc Disease’s complaint for
failure to state a claim.
It is important to read footnote 3:
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We do not address the question of whether the
Form 18 or the Iqbal/Twombly pleading standard applies
in this case as we conclude that Disc Disease’s claims of
patent infringement were sufficiently pleaded under the
latter. See Lifetime Indus., Inc. v. Trim-Lok, Inc., 869
F.3d 1372, 1377 (Fed. Cir. 2017) (“The parties assume
that there is a difference between the requirements of
Form 18 and Iqbal/Twombly; however, we have never
recognized such a distinction. In any event, we need not
resolve the question whether there is a difference between
the two standards here because, as we explain, the [complaint]
met the Iqbal/Twombly standard.” (citation omitted).
In a mixed decision, plaintiff TAOS won on liabilty but the monetary award decision was vacated:
We now affirm in part, reverse in part, vacate in part,
and remand. Among our rulings, we affirm liability for
trade secret misappropriation, though on a more limited
basis than TAOS presented to the jury, and we affirm
liability for infringement of the asserted apparatus claims
of the patent at issue. But we vacate the monetary
awards, and we remand for further proceedings.
The basis of decision was modified
[Defendant] Intersil argues that we must reverse the jury verdict
of liability for trade secret misappropriation. We disagree,
although we agree that the verdict cannot properly
rest on some of the bases TAOS presented to the jury.
Intersil has persuasively shown that the misappropriation
verdict cannot properly rest on two of TAOS’s theories—the
theory that Intersil’s packaging choice was the
result of misappropriated information, and the theory
that Intersil misused the financial information for a Build
vs. Buy analysis. Nevertheless, Intersil has not shown
that the liability verdict should be set aside. Intersil does
not specifically contend that the submission of the first
(glass packaging) theory to the jury now requires vacating
the liability verdict. And though Intersil does make such
a contention based on the submission of the second (Build
vs. Buy) theory to the jury, we find vacatur on that
ground unjustified even if we assume (without deciding)
that Intersil is correct in viewing the second theory as not
merely unsupported by sufficient evidence but as “legally”
The general rule is that “if a jury could find liability
according to multiple theories, and one of them is [legally]
erroneous, we reverse unless we can tell that the jury
came to its decision using only correct legal theories. If it
is impossible to tell whether a correct theory has been
used, we reverse for a new trial.” Rodriguez v. Riddell
Sports, Inc., 242 F.3d 567, 577 (5th Cir. 2001) (citations
omitted); see McCaig v. Wells Fargo Bank (Tex.), N.A., 788
F.3d 463, 476 (5th Cir. 2015). But the verdict will stand if
the legal error is harmless. See Skilling v. United States,
561 U.S. 358, 414 & n.46 (2010); Hedgpeth v. Pulido, 555
U.S. 57, 60–61 (2008) (per curiam); United States v.
Skilling, 638 F.3d 480, 481–82 (5th Cir. 2011). An error is
harmless if it did not affect Intersil’s “substantial rights.”
28 U.S.C. § 2111; Fed. R. Civ. P. 61; see also Shinseki v.
Sanders, 556 U.S. 396, 407–08 (2009). Harmless-error
review is a flexible one in which we “determin[e] whether
[the] error is harmless through the . . . case-specific
application of judgment, based upon examination of the
record.” Shinseki, 556 U.S. at 407. Unless prejudice is
clear even without any explanation, “the party seeking
reversal normally must explain why the erroneous ruling
caused harm.” Id. at 410.
experts testified that there was no evidence of Intersil’s
independent design of that structure. J.A. 20867;
J.A. 21961. Intersil has not provided any explanation as
to why the error at issue is harmful in light of this evidence.
In these circumstances, we affirm the verdict of Intersil’s
liability for trade secret misappropriation, limited to
Intersil’s use of the photodiode array structure.
As to the monetary award:
Intersil challenges the amount of the monetary award
for trade secret misappropriation on several grounds,
including that the absence of liability on at least the
“Build vs. Buy” trade secret requires vacatur of the award
and that the award encompassed damages attributable to
sales that occurred long after the 1:1 interleaved photodiode
array structure was no longer a trade secret.6 We
agree as to both and vacate the award.
The monetary award for trade secret misappropriation
must be vacated because we have determined that
misappropriation liability here can properly rest on only
one of the three grounds that TAOS presented to the jury.
TAOS’s calculation of monetary relief did not distinguish
among those grounds. TAOS’s expert testified that the
“trade secrets [were] the – the drivers of sales.”
J.A. 21137–38. But he did not explain which of the trade
secrets contributed to what amount of profit to be disgorged;
he assigned all profits to the misappropriation of
all trade secrets. On this record, we have no basis to
conclude that the remaining ground for liability—the
photodiode structure trade secret—supports the entire
award. This is one reason for vacating the award.
There is a second, independent reason. As to the loss
of trade secret status, the unrebutted evidence at trial
showed that TAOS’s 1:1 interleaved photodiode array was
accessible to Intersil by proper means long before the time
of many of the sales included in TAOS’s request for monetary
relief. Such accessibility existed no later than January
2006, when Intersil successfully reverse-engineered
the TSL2560, and perhaps as early as February 2005,
when TAOS “released” the TSL2560.8 We need not pinpoint
the date to know that it predated many of the sales
included in the calculation of monetary relief put before
the jury by TAOS’s expert.
Accessibility by proper means rendered the photodiode
array structure no longer a protected secret. See E.I.
duPont deNemours & Co. v. Christopher, 431 F.2d 1012,
1015 (5th Cir. 1970)
Here, the jury awarded disgorgement of profits in theContinue Reading ...
exact amount TAOS’s expert proposed, based on sales
from April 2006 through March 2014. More than 90% of
that award was attributable to sales that occurred between
January 2008 and March 2014. TAOS’s evidence
supporting its claim to monetary relief for trade secret
misappropriation did not limit the covered sales to a
head-start period, and that omission cannot be deemed
harmless. The jury awarded what TAOS sought, and
given the timing of the sales on which the relief sought
was based, the absence of any limitation to a head-start
period might have had large consequences. A head-start
period of less than two years, which Intersil has suggested,
would seem to require exclusion of the lion’s share of
the sales covered by the award on appeal. Oral Argument
at 7:05–17 (Intersil counsel representing that the headstart
period would be 22 months); see J.A. 19455 (TAOS,
in its opening statement to the jury, asserting a similar
For those reasons, we vacate the jury’s monetary
award for misappropriation of trade secrets.
NCATS is working with industry to de-risk promising therapies by helping to take them further down the development pipeline. But the key ingredient remains finding a private sector partner willing and able to assume the burden of commercial development, which dwarfs the amount of money the government spent on the underlying research. This investment can only be justified if the technology has strong patent protection… There’s a reason it’s called intellectual property. Ownership of…
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