Gibbons Law Alert

Gibbons Law Alert

Category: Patent

Obama Administration’s Latest Crackdown on Patent Trolls

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Posted in Patent

On June 10, 2013

We have recently posted on various developments relating to the surge of litigations involving non-practicing entities, or patent assertion entities, also called “patent trolls.” Last week, the Obama administration launched its latest attack on these litigious parties. Last Tuesday, the President issued seven legislative recommendations and five executive orders aimed to reduce the number of patent troll cases being filed in federal court. Those recommendations and orders can be found at the White House’s website.

Twitter’s Innovative Patent Agreement (“IPA”) is in Play . . . .

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Posted in Patent

On May 31, 2013

Last spring, we reported Twitter’s introduction of a novel employee patent assignment plan called the “Innovator’s Patent Agreement” (“IPA”). In short, the IPA is a patent assignment agreement, or transfer of patent ownership from an inventor/employee to a company, where the inventor retains control over how the patent is used. Twitter’s IPA now is in play.

The Patent Troll Assaults Continue … But To What End?

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Posted in Patent

On May 30, 2013

Somewhere, someone must have taken the famous cartoon of Elmer Fudd, in full hunting regalia, and changed the caption to read, “Shhhhhhhhhhh, I’m hunting Twolls.” (After securing the appropriate IP permissions, of course.) This past fall, we posed the hypothetical question of whether it was open season for patent trolls, euphemistically referred to as non-practicing entities (“NPEs”) or patent assertion entities (“PAEs”), in the wake of the new 35 U.S.C. § 299.

Declaratory Judgment Jurisdiction Considerations in Patent Cases: The District of New Jersey Speaks

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Posted in Patent

On May 16, 2013

IP practitioners should read and heed Judge Martini’s recent decision in Medidata Solutions, Inc. v. DATATRAK Int’l, Inc., 2-12-cv-04748 (D.N.J. May 13, 2013, Docket 33), which addresses considerations for declaratory judgment jurisdiction in a patent dispute. The case involved two patents owned by DATATRAK, the “parent” ‘087 patent, and the “child” ‘294 patent, which issued from a continuation application.

The Seed Giant Stands Tall: The Supreme Court Rules in Favor of Monsanto

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Posted in Patent

On May 14, 2013

This Spring has been fruitful for seed giant, Monsanto. We reported earlier that Monsanto and rival DuPont entered into technology licensing agreements, ending nearly four years of patent and antitrust litigation. On Monday, May 13, Monsanto’s cornucopia arrived, with the Supreme Court ruling unanimously in its favor. This case revolved around the question of whether the doctrine of patent exhaustion allowed a farmer who bought patented seeds to, without permission, reproduce the seeds through planting and harvesting. The seeds in question were glyphosate herbicide-resistant soybean seeds, covered under two patents issued to Monsanto.

Clash of MDL and AIA?

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Posted in Patent

On May 9, 2013

We previously reported on the interplay between the Judicial Panel on Multi-District Litigation (“MDL”) under 28 U.S.C. § 1407(a) and the joinder rules under 35 USC § 299 of the America Invents Act (“AIA”). In Unified Messaging Solutions, LLC v. United Online, Inc., et. al., 1-13-cv-00343 (N.D. Il. May 3, 2013) Judge Lefkow recently denied defendants’ motion to sever plaintiff’s infringement claims against them from pretrial consolidation in an MDL case, and rejected their argument that § 299 had been violated.

Inventors’ Notebooks in a First-to-File Patent System

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Posted in Patent

On May 1, 2013

Since March 16, 2013, the United States has been under a first-inventor to-file patent system. Although it has always been good scientific practice for inventors to keep and maintain laboratory notebooks, it was all the more important in a first-to-invent patent system. In light of the recent changes in U.S. patent law, will keeping and maintaining a laboratory notebook have any importance for patent applications filed under the new system?

Patentee Prevails on Liability But Denied Damages

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Posted in Patent

On April 29, 2013

A recent non-published case from the District Court of New Jersey serves as a reminder that navigating the damages phase of patent infringement is just as important as proving liability. In Unicom Monitoring, LLC v. Cencom, Inc., Judge Cooper court denied the patent owner damages despite the fact that it succeeded in proving infringement. The patent at issue covered a device for rerouting alarm reports through a telephone line. Defendant Cencom was found to infringe claim 1 of the patent. Before the trial on Unicom’s damages, Cencom moved for summary judgment to dismiss Unicom’s damages claim because it failed to present expert evidence. Cencom also moved for summary judgment on injunctive relief because Unicom failed to establish its burden under the factors articulated by the Supreme Court in eBay Inc. v. MercExchange, LLC. Cencom argued that the only proof Unicom provided supporting Unicom’s reasonable royalty position was attorney argument, Cencom’s sales records, and statements from Unicom’s owners. The Court held that while expert testimony is not required to prove reasonable royalties, it agreed with Cencom that Unicom failed to establish competent proof to support its claim.

Suffolk Tech. v. AOL et al., In Search of a Reasonable Royalty Post-Uniloc

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Posted in Patent

On April 22, 2013

On April 12, United States District Judge Ellis of the Eastern District of Virginia excluded the testimony of patentee Suffolk’s damages expert directed to a reasonable royalty based on the Nash Bargaining Solution, a kind of negotiation model. Suffolk’s expert used the Nash Bargaining Solution to determine that damages should be based on a 50/50 split of incremental profits. The Court struck this analysis, finding that the 50/50 split was analogous to the 25% rule previously rejected by the Federal Circuit in Uniloc v. Microsoft.

Gibbons Directors Robert Rudnick & Thomas Bean to Serve on Panel for Upcoming Gibbons Institute of Law, Science & Technology Event

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Posted in Patent / USPTO

On April 9, 2013

Robert E. Rudnick and Thomas J. Bean, Directors in the Gibbons Intellectual Property Department, will serve as panelists at the upcoming Gibbons Institute of Law, Science & Technology event, “USTPO Patent Post-Issuance Proceedings Under the American Invents Act — a New Frontier” on April 23. Mr. Rudnick and Mr. Bean, along with Kenneth Corsello of IBM and other industry and academic leaders, will address post-grant proceedings under the American Invents Act (AIA), from both the patent owner’s and challenger’s perspectives, as well as discovery and other new rules of practice before the Patent Trial and Appeal Board (PTAB). CLE credits for New Jersey and New York will be offered.

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