Gibbons Law Alert

Gibbons Law Alert

Category: Patent

Supreme Court to Review Willful Infringement under 35 U.S.C. § 284

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Posted in Patent

On October 26, 2015

Last week, the U.S. Supreme Court granted certiorari to review the standard for willful infringement under 35 U.S.C. § 284. The Court was specifically asked to reject the rigid two-part test set forth by the Federal Circuit in In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), which requires the court to determine whether an alleged infringer: (1) acted despite an objectively high likelihood that its actions constituted infringement of a valid patent; and (2) this objectively-defined risk was either known or so obvious that it should have been known to the accused infringer.

Federal Circuit En Banc Reaffirms Laches as a Defense to Patent Suits

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Posted in Patent

On October 19, 2015

Recently, the Federal Circuit, sitting en banc, ruled in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC that laches remains a viable defense in patent infringement actions. In doing so, the Federal Circuit rejected the extension of the Supreme Court’s 2014 decision in Petrella v. Metro-Goldwyn-Mayer, Inc., which held that the laches defense does not apply in copyright cases because the copyright statute provides a three year statute of limitations for bringing an infringement suit.

State of Vermont v MPHJ Technology Investments: A Case Study in the Timeliness and Basis of Removal

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Posted in Patent

On October 12, 2015

In State of Vermont v MPHJ Technology Investments, what appears initially as a factual simple matter, presents a complex procedural lesson in the timeliness and basis for removal of a matter from state court to federal court. In 2012, a number of Vermont businesses began receiving correspondence from MPHJ shell corporations alleging patent infringement. As a pattern, a business would receive an initial letter from the MPHJ corporation saying that the business had been identified as using patented technology. The letter included a survey to determine infringement and offered a licensing arrangement. If there was no response from Letter No. 1, Letter Nos. 2 and 3 would follow from MPHJ’s counsel, stating that the lack of a response was an admission and implying that litigation would follow.

Federal Circuit Considering En Banc Rehearing in Ariosa Diagnostics, Inc. v. Sequenom, Inc.

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Posted in Patent

On October 6, 2015

The United States Court of Appeals for the Federal Circuit is deciding whether to reconsider en banc its panel decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc. Numerous amici have lined up in support of rehearing. At stake is what room recent U.S. Supreme Court jurisprudence leaves for obtaining patent claims involving diagnostic innovations that use established processes.

District Court’s Preliminary Injunction Opinion Offers Cautionary Tale Over Engaging in Settlement Negotiations with a Rival

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Posted in Patent

On September 3, 2015

A recent decision from the Western District of Washington denying a motion for a preliminary injunction offers a cautionary tale to keep in mind when considering whether to engage in settlement negotiations with a competitor. BitTitan brought suit against SkyKick for infringement of U.S. Patent No. 8,938,510, a patent directed to the migration of email data from one email system to another. According to BitTitan, the ‘510 patent covered the essential elements of BitTitan’s email migration product and SkyKick was its main competitor in this industry.

USPTO Proposes a Pilot Program to Allow a Single APJ to Institute an Inter Partes Review

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Posted in Patent / USPTO

On September 2, 2015

The United States Patent and Trademark Office (“USPTO”) has published a request for comments in the Federal Register for a proposed pilot program which would allow for a single Administrative Patent Judge (APJ) to determine whether to institute an inter partes review (IPR), with two additional APJs being assigned to the IPR if a trial were instituted.

Federal Circuit Expands Liability for Direct Infringement Under § 271(a)

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Posted in Patent

On August 21, 2015

Last week, en banc, the United States Court of Appeals for the Federal Circuit in Akamai Technologies Inc. v. Limelight Networks, Inc. “unanimously set forth the law of divided infringement under 35 U.S.C. § 271(a),” and expanded direct infringement liability to include instances where, “an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”

Federal Circuit Directs Magistrate Judge to Decide Motion to Transfer After Long Delay and Substantive Rulings While Motion Was Pending

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Posted in Patent

On July 23, 2015

The Court of Appeals for the Federal Circuit recently granted yet another writ of mandamus, this time directing a magistrate judge in the Eastern District of Texas to stay proceedings and decide a motion to transfer that had been pending for over nine months. In re: Google, Inc., 2015-138 (Fed. Cir. July 16, 2015). This decision is a part of a continuing trend, since 2008, of the Federal Circuit taking issue with rulings from the Eastern District of Texas denying transfer motions in patent infringement actions or denying the stay of proceedings in favor of an action pending in another jurisdiction.

CRISPR Technology: A First-To-Invent Dispute in a Now First Inventor to File Patent Regime

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Posted in Patent

On July 22, 2015

On March 16, 2013, with the enactment of certain provisions of the America Invents Act (AIA), the United States’ patent system moved from being a first to invent patent system (first-to-invent) to a first inventor to file patent system (first-to-file) and retired the use of interference proceedings to determine priority of invention. Prior to and after the initiation of first-to-file system, there has been much debate as to the virtues of both systems. One aspect of this debate was that inventors with less resources and universities benefited more from the first-to-invent patent system rather than the first-to-file where resources can impact the ability to file quickly. It was in this atmosphere and as forecasted, that there was a surge in pre-March 16 application by inventors who sought to have their application reviewed under the first-to-invent system.

Federal Circuit Panel Concludes That It Lacks Jurisdiction to Review PTAB Decision Terminating IPR Proceeding

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Posted in E-Commerce / Patent / USPTO

On July 15, 2015

Recently, the Federal Circuit held that it lacks jurisdiction to review non-final Patent Trial and Appeal Board (“PTAB”) decisions, such as decisions to vacate or terminate a post-grant proceeding. In GEA Process Engineering, Inc. v. Steuben Foods, Inc., the Federal Circuit denied GEA’s petition for writ of mandamus directing the PTAB to withdraw an order in which it terminated GEA’s five pending IPR proceedings on the grounds that these IPRs should have never been instituted. The PTAB reasoned that GEA failed to identify all real-parties-in-interest and, thus, the petitions were incomplete.

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