Gibbons Law Alert

Gibbons Law Alert

Category: Patent

Because I Said So: Courts’ Inherent Powers to Impose Fees for Bad Faith, Vexatious, or Wanton Litigation

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Posted in Patent

On October 8, 2014

Fee shifting has been a recent theme in patent litigation, with judges, legislators, and state attorney generals alike attempting to curb abuses of the patent system by creating new penalties. One judge has fallen back on the long-standing inherent powers of the judiciary to do so. This appealing new method of punishing patent litigation abusers comes from the U.S. District Court of the District of Delaware, one of the nation’s busiest patent dockets. Judge Richard G. Andrews’ well-reasoned opinion awards attorneys’ fees to the defendant on the basis of the court’s inherent powers to penalize those who act in “bad faith, vexatiously, wantonly, or for oppressive reasons.” Parallel Iron LLC v. NetApp Inc., No. 12-769, Slip Op. at 15 (D.Del. Sept. 12, 2004).

New Jersey Assembly Advances Bill To Address Bad-Faith Patent Infringement Actions

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Posted in Patent

On October 7, 2014

We have previously posted on proposed federal and state legislation aimed at addressing the toll of “patent troll” litigation by non-practicing entities on the U.S. economy. The Gibbons IP Law Alert has previously posted regarding such issues on August 26, 2014, June 25, 2014, March 10, 2014, and December 13, 2013. Continuing the trend, the New Jersey General Assembly panel recently advanced bill A-2462 to address so called “Patent Troll” litigation. Consistent with other recent efforts at curbing patent litigation abuses, this bill attempts to identify wrongdoers and penalize specific abuses through monetary sanctions.

A Contested Order By The Federal Circuit Denies Request For En Banc Review Of Its Decision That Patent Co-Owners May Not Be Involuntarily Joined In A Patent Dispute

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Posted in Patent

On October 6, 2014

Recently, the Federal Circuit issued an order denying a request for en banc review of a panel decision that held that a patent co-owner may not be involuntarily joined as a plaintiff in a patent dispute. It is generally recognized that all owners to a patent in suit must be a party to the action, otherwise the suit is dismissed for lack of standing. The reason is that a defendant should not be subjected to multiple suits by different parties regarding the same patent. The Federal Circuit in STC.UNM v. Intel Corporation considered the situation in which Sandia Corp (a co-owner of the patent in suit) refused to join STC.UNM’s (the licensing arm of the University of New Mexico) patent infringement suit against Intel.

Patent Assertion Entities Hit With Rule 11 Sanctions and Section 285 Attorneys’ Fees in Separate Delaware District Court Cases

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Posted in Patent

On September 30, 2014

Much attention has been said about the role 35, U.S.C. § 285 in combating vexatious litigations brought by patent assertion entities (“PAE”) following the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014). Overshadowed by the Supreme Court’s ruling is the imposition of sanctions under Federal Rule of Civil Procedure 11. Not anymore. In a recent federal court case before Judge Richard G. Andrews, of the District of Delaware, the patent assertion entity (PAE) plaintiff was hit with R. 11 sanctions, resulting in the dismissal of all pending actions. This ruling illustrates that courts have multiple avenues to exercise their discretion on how to approach PAE actions, and offers insights as to how defendants can thwart PAE litigants that bring baseless patent infringement claims.

Blurred Lines: Third Circuit’s Lanham Act Attorneys’ Fees Analysis Follows Recent Supreme Court Ruling in Patent Case

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Posted in Patent / Trademarks

On September 29, 2014

The Court of Appeals for the Third Circuit recently decided that the U.S. Supreme Court’s April decision on attorneys’ fees in a patent case, Octane Fitness, LLC v. Icon Health & Fitness, Inc., should also be applied in trademark cases under the Lanham Act. See Fair Wind Sailing, Inc. v. Dempster, Nos. 13-3305 & 14-1572 (3d Cir. Sept. 4, 2014). Defendant Dempster had successfully moved to dismiss the action under Rule 12(b)(6) of the Federal Rules of Civil Procedure and was awarded its attorneys’ fees under § 35(a) of the Lanham Act and the Virgin Islands Code. Plaintiff Fair Wind Sailing appealed the fee award. The Third Circuit ultimately vacated the District Court’s fee award and remanded, instructing the court below to utilize an inquiry consistent with the Supreme Court’s decision in Octane Fitness.

Unified Patents Petitions for IPR to Counter Patent Troll PanTaurus’ Patent Litigation Assault

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Posted in Patent / USPTO

On September 25, 2014

Much debate has centered on patent reform and efforts to curtail the litigious activities of patent assertion entities (PAEs) also referred to as “patent trolls.” However, and as underscored for example by the number of patent lawsuits filed by Texas-based PAE PanTaurus, LLC this past year, PAEs continue to present a significant patent litigation presence.

The ITC and FTC Take Actions to Address the Toll of NPE Litigation

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Posted in International Trade Commission / Patent

On August 26, 2014

We have previously posted on proposed federal and state legislation aimed at addressing the toll of “patent troll” litigation by non-practicing entities (“NPEs”) on the U.S. economy. Additionally, a recent Federal Circuit ruling relaxing the standard for finding “an exceptional case” to justify attorneys’ fees in patent infringement actions also appears to have been motivated by need to address NPE litigation. Now the United States trade commissions want to enter the fray. The U.S. International Trade Commission (ITC), through its recent decision In the matter of Certain Optical Disc Drives, Components Thereof, and Products Containing the Same, limited the ability of licensing entities, whose patent-related activities are purely revenue driven, to bring actions under 19 U.S.C. § 1337(a)(3). Additionally, the U.S. Federal Trade Commission (FTC) has recently been given approval to conduct a study on NPEs to examine how they operate and to what extent they affect competition and innovation.

Search Error! Federal Circuit Invalidates Vringo Search Engine Patents

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Posted in Patent

On August 25, 2014

On August 15, the Federal Circuit, in a nonprecedential opinion, reversed a lower court ruling, denying I/P Engine, Inc., a subsidiary of Vringo, Inc., a $30 million patent infringement jury verdict by invalidating two of its internet search engine patents. I/P Engine brought suit against AOL Inc., Google, Inc., and others in the Eastern District of Virginia for allegedly infringing its patents, U.S. Patent Nos. 6,314,420 and 6,775,664, which relate to systems and methods for filtering internet search results, using both content-based and collaborative filtering. In November 2012, the district court found I/P Engine’s patents valid and that defendants infringed those patents. The jury awarded I/P Engine over $30 million in damages and a 3.5% running royalty.

How to Meet the Inequitable Conduct Standard after Therasense

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Posted in Patent

On August 21, 2014

The Court of Appeals for the Federal Circuit recently clarified the standard necessary for holding a patent unenforceable for inequitable conduct relating to intentionally withheld references and misrepresentations of material information. Apotex Inc. v. UCB, Inc., No. 2013-1674 (Aug. 15, 2014). Given the high standard set forth in the Federal Circuit’s prior opinion in Therasense, this decision finding inequitable conduct provides a roadmap for inventors, prosecutors, and litigants alike with regard to potential claims of inequitable conduct.

The Section 1447(d) Bar – State of Vermont v. MPHJ Technology Investments, LLC

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Posted in Patent

On August 14, 2014

In a case of procedural jockeying, the United States Court of Appeals for the Federal Circuit in State of Vermont v. MPHJ Technology Investments, LLC, held that a “district court’s remand order dominate[d] any proceedings on th[e] appeal” and because a remand under 28 U.S.C. 1447(d) “is not reviewable on appeal or otherwise[,]” the Federal Circuit lacked appellate jurisdiction.

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