Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent Infringement

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.

ITC Announces Exclusion Order Study

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Posted in International Trade Commission

On April 10, 2013

Yesterday’s Federal Register included a public notice indicating the U.S. International Trade Commission’s (“ITC”) intention to solicit input from complainants who obtained exclusion orders from the ITC following proceedings under 19 U.S.C. § 1337 (“Section 337”). Section 337 addresses unfair practices in the import trade, and especially, for enforcing U.S. intellectual property rights at the border. An exclusion order may be “limited” or “general,” and it prevents articles found to be infringing from being imported into the U.S.

Patent and Copyright First-Sale and International Exhaustion Standards to Remain in Conflict … For Now!

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Posted in Patent

On April 1, 2013

On the heels of its March 19, 2013, decision in Kirtsaeng v. John Wiley & Sons, Inc., where the Supreme Court held that international exhaustion , i.e., an ex-U.S. first-sale rule applies to copyrights, the Court has surprisingly denied Ninestar Technology Co. Ltd.’s (“Ninestar”) petition for certiorari to consider whether international exhaustion applies to patents.

Federal Circuit Limits Discovery in Inter Partes Re-examination Proceedings

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Posted in Patent

On March 22, 2013

We reported last week on the discovery limitations under United States Patent and Trademark Office (“PTO”) guidelines as they pertain to inter partes review (“IPR”) proceedings. On Wednesday, in Abbott Labs. v. Cordis Corp., the Federal Circuit ruled that discovery is not allowed in inter partes re-examinations. The case stemmed from Abbott’s motion to quash two subpoenas duces tecum issued by Cordis which sought documents for use in a pending IPR re-examination. Id. at 2. In the underlying action, Cordis sued Abbott in the District Court for the District of New Jersey for infringement of two of its patents directed to drug-eluting stents. Id. at 3. The PTO agreed to inter partes re-examination of the patents and by office action, the examiners found both patents obvious. Id. at 3-4.

Treble Damages for Willful Patent Infringement Become Elusive

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Posted in Patent

On March 20, 2013

Accused patent infringers continue to breath easier as an ever more challenging path to treble damages persists. Recent decisions from the Court of Appeals for the Federal Circuit placed the objective prong of the In re Seagate test toward establishing willful infringement squarely with a judge. The impact on appeal has taken effect. Under 35 U.S.C. § 271(a), direct patent infringement is a “strict liability” offense. In certain cases, 35 U.S.C. § 284 may provide “up to three times” actual damages. A determination that the accused infringer willfully infringed is used to determine whether enhanced damages are warranted. Finisar Corp. v. DirecTV Group, Inc. 523 F.3d 1323, 1339 (Fed. Cir. 2008).

Limitations on Discovery in Inter Partes Review Proceedings

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Posted in Patent / USPTO

On March 12, 2013

Companies accused of patent infringement have a number of basic alternatives to contemplate: settle the matter; defend the suit; or consider resort to a post grant patent proceeding at the United States Patent and Trademark Office (USPTO). With an eye towards cost, risk and accurate resolution, inter partes review (IPR) proceedings are an attractive alternative to settling or defending.

NJIPLA to Host the 2013 Patent Litigation Seminar

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Posted in Patent

On March 11, 2013

On Wednesday, March 13, the New Jersey Intellectual Property Association will host the 2013 Patent Litigation Seminar at the Woodbridge Hilton in Iselin, NJ. This seminar will cover a range of important patent litigation topics such as: The Divided Court on Divided Infringement: What Comes Next? Willful Infringement: The Federal Circuit is Listening. The Clear Line Blurs – Where is the “Safe Harbor” of 271(e)(1) after Classen v. GSK & Momenta v. Amphastar? Prometheus v. Mayo: Judicial Activism or Reality Check? Observations on the Gene Patenting Debate.

Gibbons Institute of Law, Science & Technology Files Amicus Brief in “Pay-for-Delay” Case Before Supreme Court

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Posted in Pharmaceuticals

On March 8, 2013

We previously reported on the battle over so-called “pay-for-delay” settlements, which puts the pharmaceutical industry versus the Federal Trade Commission (“FTC”) before the Supreme Court, to decide the legality of reverse payments in Hatch-Waxman cases. The case is FTC v. Actavis, Inc., et al. Last week, the Gibbons Institute of Law, Science & Technology, among 16 other amici, filed briefs in support of respondents and the lawfulness of these payments. The other amici included: Antitrust Economists; Bayer AG and Bayer Corp.; Health Economics and Law Professors; Mediation and Negotiation Professionals; Law Professors Gregory Dolin, Kent Bernard, et al.; The American Intellectual Property Law Association; Enavail, LLC; The Generic Pharmaceutical Association]; Intellectual Property Owners Association; Merck & Co., Inc.; National Association of Manufacturers; Pharmaceutical Research and Manufacturers of America (Phrma); New York Intellectual Property Law Association; Shire plc; Washington Legal Foundation; Generic Manufacturers Upsher-Smith Laboratories, Inc.; Teva Pharmaceuticals USA, Inc.; Ranbaxy Pharmaceuticals, Inc.; Mylan Pharmaceuticals Inc.; and Impax Laboratories, Inc.

PhatRat’s Helmet Impact Technology Patent Suit in N.D. Illinois — Considerations For Defendant Riddell

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Posted in Patent

On March 5, 2013

In PhatRat Technology, LLC v. Riddell, PhatRat, the purported exclusive licensee of U.S. Patent Nos. 7,386,401 and 7,693,668 relating to helmet impact reporting technology (“the PhatRat patents”), sued sporting goods manufacturer Riddell in the Northern District of Illinois for infringement of the PhatRat patents. The PhatRat patents issued in June 2008 and April 2010, respectively.

Facebook Sued Over “Like” Button and Other Features

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Posted in Patent

On February 20, 2013

Facebook, and its “Like” button, seem to be ubiquitous. Well, last week, Facebook and social bookmarking service, AddThis, were sued in the Eastern District of Virginia for willful infringement of two patents, U.S. Patent Nos. 6,415,316 and 6,289,362. These patents were filed by a Norwegian computer programmer, Joannes Jozef Everardus Van Der Meer, in the late 1990s. The ‘316 patent is directed to enabling a user to create a “personal diary,” which the complaint states “today would be called ‘social media.'” The ‘362 patent discloses techniques for automatic transfer “of third-party content from a content-provider’s website to the user’s personal diary page.” The complaint alleges that Facebook’s “Like” button and other features infringe the ‘316 and ‘362 patents.

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