• Enhanced Damages:  Willful Infringement, "Should Have Known," Willful Blindness
    in: enhanced damages, United States  | 

    Enhanced Damages: Willful Infringement, "Should Have Known," Willful Blindness

    As reported by Dennis Crouch recently on Patently-O, on October 2 the Supreme Court denied a petition for a writ of certiorari in Bombardier Recreational Producers Inc. v. Arctic Cat Inc., in which the question presented was
    Whether a finding of willful infringement based on In re Seagate’s “should have been known” negligence standard violates the requirement that subjective willfulness must be “intentional or knowing,” as set forth by the Supreme Court in Halo Electronics Inc. v. Pulse Electronics Inc.

    For previous discussion of the Federal Circuit opinion on this blog, see here; see also the Scotus Blog webpage for this case, here.  As Professor Crouch also noted, however, another petition raising essentially the same issue, plus one more, was filed in Corning Optical Communications v. PPC Broadband.  Here are the questions presented:
    1. In determining whether to enhance damages for “egregious” infringement under §284, must courts consider all relevant circumstances, including evidence that the defendant’s position was objectively reasonable?

    2. Does a finding of willful infringement based on a “should have known” standard violate the requirement that willfulness be “intentional or knowing”? 

    It will be interesting to see if the Supreme Court decides to pick this one up.  On a related note, Professor Dmitry Karshtedt recently called to my attention an Order Denying Defendant’s Motions to Dismiss in Corephotonics, Ltd. v. Apple, Inc., in which Judge Lucy Koh concludes that willful blindness is sufficient to satisfy the “intentional and knowing” standard:
    . . . to state a claim for willful infringement, Corephotonics must allege that Apple knew of Corephotonics’ patents and then acted or continued to act even though it knew that it was infringing Corephotonics’ patents or that the risk of such infringement was obvious. Arctic Cat, 876 F.3d at 1371. . . .

    . . . it has been well-established both before and after the Halo decision that knowledge of a pending patent application does not confer knowledge of an existing patent. . . .

    However, Corephotonics also alleges that in 2016, Apple cited to one of Corephotonics’ issued patents. . . .

    Moreover, Corephotonics also alleges in its pleadings that Apple was “willfully blind” to a high risk that it was infringing Corephotonics’ patents. . . . In Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011), the United States Supreme Court concluded that the doctrine of willful blindness applied to the requirement, in the induced infringement context, that a defendant know its induced acts constitute patent infringement. Id. at 768–69 & n.9. The Global-Tech Court stated that “a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts.” Id. at 769.

    Apple contends that allowing willful infringement claims based on a defendant’s willful blindness contradicts the Federal Circuit’s statement that “[k]nowledge of the patent alleged to be willfully infringed continues to be a prerequisite for enhanced damages.” WBIP, 829 F.3d at 1341. . . . However, the United States Supreme Court made clear in Global-Tech that a finding of willful blindness is, in effect, a finding of knowledge. 563 U.S. at 770 (discussing how the willful blindness doctrine “permits a finding of knowledge”). Post-Halo, courts have recognized that allegations of willful blindness can satisfy the knowledge requirement for willful infringement. See Straight Path IP Grp., Inc. v. Apple Inc., 2017 WL 3967864, at *4 (N.D. Cal. Sept. 9, 2017) (denying motion for judgment on the pleadings on an enhanced damages claim predicated on plaintiff’s willful blindness allegation). The Court therefore considers Corephotonics’ willful blindness claims.

    Here, Corephotonics contends that its allegations that Apple knew about Corephotonics’ technology, knew about Corephotonics’ patent applications, and then instructed Corephotonics not to share Corephotonics’ issued patents with Apple raise the inference that Apple “believed that there was a high probability that it was infringing the Asserted Patents, and that Apple took deliberate actions to avoid learning of that fact.” Opp. at 12. Specifically, Corephotonics alleges that after Corephotonics offered to share its patents with Apple’s technical and business personnel, Apple sent Corephotonics an email in October 2016 stating, “Please do not send any patents to us until further notice. Legal counsel might reach out with any questions.” FAC ¶ 35. At that time, Corephotonics’ ’291 and ’032 patents had issued. FAC ¶¶ 3, 5.

    The Court agrees with Corephotonics that the allegations in the FAC and the ’18 Complaint raise the inference that Apple was at least willfully blind to a high risk that it was infringing Corephotonics’ patents. . . .

    I’m inclined to think Judge Koh is right.  Whether courts will ever go farther, as Professor Karshtedt has urged, and conclude that a reckless failure to search for potentially relevant patents in advance of product launch is relevant to willfulness might be a tougher sell . . . .
  • Patent Prosecution Experience Gap: Getting 2 Years Experience
    in: Gene Quinn, Guest Contributors, IP News, IPWatchdog Articles, IPWatchdog.com Articles, john white, Patent Practice, Patent Prosecution, Patent Prosecution Basics, Patently-O, patents  | 

    Patent Prosecution Experience Gap: Getting 2 Years Experience

    For people starting out in the patent field, virtually all job announcements require some patent prosecution experience. A typical requirement is, for example, at least 2 years of experience in prosecution. I get it. What employer wants to invest in training only to see a person slip away once they can finally do something useful. Rather, you’d like to on-board the person, get them working immediately and discover what gaps may exist from their past experience and work to fill them in. Great…

  • Can the Federal Circuit use Rule 36 Affirmances in PTAB Appeals?
    in: Affirm, amicus briefs, Appellate Review, CAFC, Capella Photonics, cisco system, courts, Federal Circuit, IBM, Inter Partes, inter partes review, IP News, IPR, IPWatchdog Articles, IPWatchdog.com Articles, patent trial and appeal board, Patently-O, patents, PTAB, PTAB Trials, Rule 36 judgment, SCOTUS, TecSec, US Inventor, US Supreme Court  | 

    Can the Federal Circuit use Rule 36 Affirmances in PTAB Appeals?

    Inventor advocacy group US Inventor recently filed an amicus brief with the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari in Capella Photonics v. Cisco Systems. This case, if taken up on appeal, will require the Supreme Court to answer whether the Court of Appeals for the Federal Circuit operates in violation of 35 U.S.C. § 144, the statute governing how the Federal Circuit must respond to appeals of decisions from the U.S. Patent and Trademark…

  • 本件の概要 – 経済産業省 (プレスリリース)

    経済産業省 (プレスリリース)
    採択された取組は、大企業の知財を中小企業が活用するための出会いの場や仕組みを提供する取組、大学生のアイデアを活用して中小企業の商品開発を促進する産学連携の取組、金融機関とも連携することで中小企業の新規事業の創出を支援する取組、海外の財界・知財 …

    and more »

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    $$ The leader sequence of the protein is one amino acid shorter and thus the mature protein starts at residue 27 (ala). / 該蛋白のリーダー配…

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  • 政府 知的財産推進計画2015策定 – ヘッドライン ニュース

    政府 知的財産推進計画2015策定
    ヘッドライン ニュース
    政府の知的財産戦略本部は19日、「知的財産推進計画2015」を策定した。「地方における知財活用の推進」「知財紛争処理システムの活性化」「コンテンツおよび周辺産業との一体的な海外展開の推進」を重点3本柱とするもので、今後取り組むべき重要施策として8項目を …

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  • Letter from AmeriKat: The patent “wrist” race begins, copyright bother for Bieber & 2016 election preview

    The AmeriKat’s Fitbit is great at monitoring activity,
    as well as inactivity…

    The pursuit of balance is a noble cause.  If obtained it can create happy, rested and centered family members, employees and friends.  Similarly, intellectual property lawyers are taught that balance is the goal of a properly functioning IP system.  In IP policy, we strive for the Goldilocks amount of incentivization, creation and protection.  But in the real world, competing interests stretch and distort the balance in our lives; we work too much, sleep too little.  In IP, we often find that we are protecting too much, but infringing too little.  How should we resolve the imbalance that we face in life or law in order to find the golden mean?  Well, if the stories from the AmeriKat are a guide, the answer seems to be “to litigate”.

    Silicon digital bracelets have now firmly replaced the leather and gold watches that used to adorn the wrists of lawyers and barristers monitoring their every step and heartbeat in the pursuit of health and balance.  It was therefore only a matter of time before the litigation arms (or wrist) race would commence.  On 10 June 2015,  Jawbone started patent litigation proceedings in court in the Northern District of California against Fitbit claiming that they are infringing three of their US patents relating to health and wellness management methods and systems for detecting, monitoring and reporting physiological conditions.  Fitbit’s previous and current products are claimed to infringe these patents.  In its complaint Jawbone also stated their intention to request that the International Trade Commission (ITC) commence an investigation into Fitbit’s alleged infringing activities (see footnote 1 of the complaint).  In a statement from Fitbit, the company declared that they were intending to “vigorously defend” the claims.  This was the second lawsuit filed by Jawbone against Fitbit.  The first lawsuit came at the end of May when  Jawbone filed a claim in San Francisco Superior Court alleging that Fitbit devised “a carefully orchestrated plan” to misuse its confidential information following a 5-team employee move from Jawbone.  In a statement Fitbit said that they were “unaware of any confidential or proprietary information of Jawbone in our possession and we intend to vigorously defend against these allegations.”  The timing of these lawsuits is interesting; they came only a few weeks after Fitbit announced its intention to sell its shares on the New York Stock Exchange (see its S-1 form here).  However, if the litigation was hoped to make a dent, it hasn’t yet.  Following Thursday’s IPO, its shares are worth $32.50 – over 50% above its IPO price of $20.

    Hip hop artist Devinthe Dude” Copeland saw his copyright claim against Usher and Justin Bieber resurrected last week as Circuit Judge Pamela Harris of the Court of Appeals for the Fourth Circuit vacated the district court’s earlier ruling that “Somebody to Love” did not infringe Copeland’s copyright in his own song of the same name.  In reaching its decision, the district court found that no reasonable jury could find that the songs were substantially similar under the intrinsic prong of the test (a subjective test).  They therefore did not consider whether they were extrinsically similar (an objective test looking at the parts of the work that are original and protected).  Admittedly not well-versed in Bieber’s body of work, the AmeriKat spent an agonizing few minutes watching the video on YouTube (but she supposes that those who watched the video 305 million times cannot all be wrong).  The Appeals Court found that the chorus was similar and significant enough (in that they are “the heart of the compositions”) for a reasonable jury to find that the songs were intrinsically similar.  Although the court recognized that the most obvious similarity of  the “I [] need somebody to love” chorus is common in music (see Jefferson Airplane and Queen), such an analysis would fall under the extrinsic assessment which looks at what portions of the work are protectable, not an intrinsic analysis where the the works in their entirety are examined.  The intrinsic analysis is what the ordinary listener would conduct.  The Appeals Court concluded that

    “…when we listen to the choruses that way, and in the context of the entire songs, we hear the kind of meaningful overlap on which a reasonable jury could rest a finding of substantial similarity. It is not simply that both choruses contain the lyric “somebody to love”; it is that the lyric is delivered in what seems to be an almost identical rhythm and a strikingly similar melody. To us, it sounds as though there are a couple of points in the respective chorus melodies where the Bieber and Usher songs go up a note and the Copeland song goes down a note, or vice versa. In our view, however, a reasonable jury could find that these small variations would not prevent a member of the general public from hearing substantial similarity,”

    The case has been remanded back to the district court.

    Not one for the usual campaign
    buttons, the AmeriKat has her whiskers
    on this beauty from Democratic Stuff.

    The AmeriKat is gearing up for the 2016 presidential elections.  Although her vote is a far way off from being cast, the AmeriKat has started to examine the intellectual property records of the candidates.  She is doing some more digging in time for the primaries, but in the meantime it may come as a surprise, especially to the younger Kat readers, that Hillary Clinton actually specialized in intellectual property law when at Rose Law Firm during the late 1970s in Arkansas.  Senator Bernie Sanders (I-Vt) and a contender for the presidential post proposed legislation a few years ago that followed the Joseph E Stiglitz “prizes not patents” school of thought by way of the The Medical Innovation Prize Fund Act.  That bill died in the last Congress (a summary of the legislation can be read here).  Meanwhile, Rand Paul has had an interesting approach to intellectual property (click link here).  Over the coming months, IP commentators and industries will undoubtedly be taking a deep dive into the IP credentials and positions of the candidates in order to predict how a Clinton or Bush or Cruz White House will impact IP law and policy.

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  • VID: The U.S. Patent System is Broken: Derek Khanna on Trolling and Low … – Reason (blog)

    Reason (blog)
    VID: The U.S. Patent System is Broken: Derek Khanna on Trolling and Low
    Reason (blog)
    “A patent is a government-granted monopoly” that gives the owner sole right to profit from making or licensing a product, Khanna explains. “So effectively every week the government says, ‘These are all the things that American citizens can’t do for
    A Short History Lesson on Patent PolicyIPWatchdog.com

    all 2 news articles »

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  • Letter from Japan 1: product placement

    Subliminal ad: buy an
    Abercrombie and get a cat?

    From our friend and colleague, one-time guest Kat and Class 46 trade mark blogger Laetitia Lagarde comes the first of an occasional series of blog posts from Japan, where she is spending some time.  These posts will emerge, with luck at the rate of around one a fortnight till Laetitia finds herself back on European soil.  Here’s her first offering, on product placement:

    “This guest Kat is currently exploring the land of Hello Kitty™ where she has to dig her claws into local IP regulations or, sometimes, the lack thereof. Constantly surrounded by advertisements (even on metro door handles) typically displaying bright neon colours, she was keen to investigate the topic of product placement and, much to her surprise, discovered that in the land of anime and product merchandising idols, there are no legislative provisions to regulate this area.

    This practice originated from the US – where entire shows like Madmen embrace the concept – and in Europe, where it is officially defined by the Audiovisual Media Services Directive 65/2007 as
    “any form of audiovisual commercial communication consisting of the inclusion of or reference to a product, a service or the trade mark thereof so that it is featured within a programme, in return for payment or for similar consideration”, although each member state continues to implement its various unique restrictions”.

    In Japan, no such sui generis regulation exists. In similar fashion to other jurisdictions, misleading advertisements and advertisements that misrepresent the quality of goods and services are prohibited under Japan’s Act against Unjustifiable Premiums and Misleading Representations (UPMRA) or the Japan Unfair Competition Prevention Act (here). The use of “subliminal techniques” and advertisements relating to tobacco and alcohol consumption for minors are also prohibited in Japanese TV broadcasting, although there is no specific regulation regarding surreptitious advertising and product placement. This doesn’t apply to movies where, for example, one of the most famous scenes in Lost in Translation promotes Suntory  – which, it turns out, is not just a whiskey brand as discovered in the ubiquitous vending machines here.

    In Japan many animes have included brands either as original or as parodies which do not fall within the realm of unlawful advertisement. More recently the Tiger & Bunny anime has achieved product placement through superheroes: each works for a sponsor company and their uniforms contain advertising for real-life companies.

    Brand owners know that product placement allows them to build goodwill and brand awareness, even if studies seem to reach the conclusion that the actual impact on the consumer differs according to countries and cultures (see this comparative study). Significantly, this year’s MARQUES annual conference theme is psychology and brands: sometimes it might not be necessary for brands to pay for their actual contribution to obtain the same gain as the officially placed products“.

    For involuntary product placement and generic brands click here
    Top 40 product placements in movies here 
    For reverse confusion on cartoon brands to the real world click here 

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