Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent Litigation

In the Limelight: Induced Infringement Issues Retakes Center Stage

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Posted in Patent

On May 8, 2014

On April 30, 2014, the Supreme Court heard oral arguments in Limelight Networks, Inc., v. Akamai Technologies, Inc., et al., No. 12-786. We previously reported on the Federal Circuit’s twin en banc opinions in Akamai Techs., Inc. v. Limelight Networks, Inc., and McKesson Techs. Inc. v. Epic Sys. Corp., 692 F.3d 1301 (Fed. Cir. 2012), finding inducement under 35 U.S.C. § 271(b) even when a single actor was not liable for direct infringement. Both Limelight and Epic petitioned the Supreme Court for review, but the Epic case subsequently settled.

Supreme Court Reestablishes Standard for Attorneys’ Fees Under §285

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Posted in Patent

On May 5, 2014

On Tuesday, April 29, 2014, the Supreme Court in Octane Fitness v. ICON Health and Fitness issued a ruling that reestablishes the previous standard for awarding attorneys’ fees in the event of an exceptional case under 35 U.S.C. §285. In its opinion, the Court held that a case should be considered “exceptional” when it “is simply one that stands out from others with respect to the substantive strength of a party’s litigating position … or the unreasonable manner in which the case was litigated.” The Court instructed that this determination should be made on a “case-by-case” basis “considering the totality of the circumstances.”

Start the Clock: NJ Court Holds Declaratory Judgment Available to Later ANDA Filers

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Posted in Patent

On April 11, 2014

Yesterday, the United States District Court for the District of New Jersey held that patents listed in the Approved Drug Products with Therapeutic Equivalence Evaluations (the “Orange Book”), but not asserted under the Hatch-Waxman framework, are subject to declaratory judgment actions by later ANDA filers seeking to trigger the first ANDA filer’s exclusivity period.

Patent 101

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Posted in Patent

On March 31, 2014

On the heels of CLS Bank Int’l v. Alice Corp. Pty presently before the Supreme Court, the Federal Circuit and district courts in 2014 have continued to issue decisions analyzing computer-implemented inventions under 35 U.S.C. § 101. These courts have generally sought to answer similar questions: whether the claim is an abstract idea; whether this abstract idea preempts all other uses or can be performed in the human mind (or on a pen and paper); and whether the claim contains other limitations to narrow it sufficiently, such as being tied to a specific machine or transforming the data into a different thing.

New Patent Case Scheduling Order Seeks to Achieve Efficiencies in Delaware

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Posted in Patent

On March 26, 2014

This week, United States District Judge Sue L. Robinson issued a new Patent Case Scheduling Order dictating how patent cases will proceed in Her Honor’s Court. The District of Delaware is second only to the Eastern District of Texas in the number of patent cases filed; both of which have nearly three times the number of patent cases as the third busiest district, the Central District of California. In order to help streamline the hundreds of patent cases assigned to Her Honor, Judge Robinson issued a new Patent Case Scheduling Order, requiring the identification of key issues earlier in the case, which should improve overall case efficiencies.

PTAB Finds DNA Sequencing Patent Claims to be Invalid

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Posted in Biotech / Patent

On March 12, 2014

As we have previously reported, Inter Partes Review (IPR) was introduced on September 11, 2012, under provisions of the America Invents Act (AIA) as one of new several tools for challenging the validity of granted patents in the U.S. Patent & Trademark Office (USPTO). With an anticipated pendency of 18 to 24 months to final written decision upon filing of an IPR request, the USPTO’s Patent Trial and Appeal Board (PTAB) is presently proceeding to issue its first IPR decisions. Although a majority of IPR requests filed to date have been directed to patents in the electrical and computer arts, decisions are also being rendered for patents in other technology domains including the biological arts.

A Quest to Slay the Trolls: Legislative Attempts to Send a Cease and Desist Message to Patent Trolls

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Posted in Patent

On March 10, 2014

Concerns about shake-down patent assertion have prompted response at federal and state levels, from all branches of government. Proposed legislative solutions have included bills that would penalize bad faith claims, impose fines on patent assertion entities (“PAEs”) that send letters with vague allegations of infringement, or make the awarding of attorney’s fees standard in PAE patent litigations. While no legislative proposal answers all the unique challenges patent trolls represent, these lawmaking efforts have highlighted the issue and are prompting other stakeholders to meaningfully assess the holes in the current patent system.

Potential For Harm: Indemnity Agreements and Willfulness Determinations

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Posted in Licensing / Patent

On March 4, 2014

Patent indemnification agreements, common in asset purchases, mergers and acquisitions, manufacturing, and patent licensing agreements, reduce the possibility of liability should a third party later assert its patent against the asset purchaser or licensee. However, entering into such agreements to mitigate risk can actually increase exposure. During the damages stage of patent infringement lawsuits plaintiffs often seek, with varying success, to bring in evidence of the existence of a defendant’s indemnification agreement to show that defendant knew of the patent and committed willful infringement. Thus, the very vehicle used to shift the risk of monetary liability can sometimes itself be used as a mechanism to enhance damage awards.

Track B – EDTX Continues to Spearhead Efficient Patent Litigation Procedures

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Posted in Patent

On February 28, 2014

The Eastern District of Texas continues to lead the way with practical and efficient procedures for patent litigations. On February 25, Chief Judge Leonard Davis implemented General Order 14-3 “Regarding Track B Initial Patent Case Management Order.” This Order provides “additional efficiencies and cost savings” for appropriate patent cases, and is designed to complement the existing and now familiar case management procedures and local rules, or so-called “Track A,” case management schemes.

Watch Out: Lack of Diligence When Amending Contentions Can Lead to Preclusion

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Posted in Patent

On February 27, 2014

A party needs to be cognizant of the infringing instrumentalities it identifies in its infringement contentions and any subsequent amendments. In LMT Mercer Group, Inc. v. Maine Ornamental, LLC et al, No. 10-4615, 2014 U.S. Dist. LEXIS 5719 (D.N.J. Jan. 24, 2014), Judge Wolfson denied Plaintiff LMT Mercer Group’s (“LMT”) motion to amend its infringement contentions to add a product that it removed from its previous filings and then delayed in correcting that exclusion.

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