Tagged: Patent Litigation
We previously reported on February 6, 2014, that the United States Patent Trial and Appeal Board (“PTAB”) determined that a “complaint alleging infringement of the patent” does not include arbitration proceedings for purposes of triggering the time bar under 35 U.S.C. § 315(b). This week, the PTAB also determined what constitutes a bar to filing an inter partes review petition under 35 U.S.C. § 315 (a)(1); specifically whether a civil action filed before a petition for an inter partes review that is subsequently dismissed without prejudice is a bar to the petition under 35 U.S.C. § 315 (a)(1). The PTAB held that it is not.
Recent years have seen a significant number of antitrust challenges to so-called “reverse payment” pharmaceutical patent litigation settlements between brand name manufacturers and their generic competitors. The Supreme Court’s decision in FTC v. Actavis resolved a split among the courts of appeal, and held that settlements in which “large and unjustified” reverse payments are made are subject to antitrust scrutiny in the form of a traditional “rule of reason” analysis. In the wake of Actavis, the lower courts have begun to grapple with the question of what, if any, application Actavis has to the disposition of antitrust challenges to patent settlements that do not include a large payment of cash by the brand producer to the generic, but may include other forms of non-monetary consideration.
The United States Patent Trial and Appeal Board (“PTAB”) recently interpreted what constitutes a “trigger” under 35 U.S.C. § 315(b). The PTAB concluded that under the statute, a “complaint alleging infringement of the patent” does not include arbitration proceedings. Amkor Tech., Inc. (“Amkor”) and Tessera, Inc. (“Tessera”) executed a license agreement in 1996 (“Agreement”) under which Amkor had rights to use Tessera technology covered by U.S. Patent No. 6,046,076 (“the ‘076 patent”) in exchange for the payment of royalties. In 2009, a dispute arose regarding the payment of royalties under the Agreement. Amkor availed itself to the arbitration provision in the Agreement and initiated an arbitration proceeding seeking declaratory relief that it was fully compliant with the terms of the Agreement. In its answer to Amkor’s arbitration request, Tessera included counterclaims for patent infringement. In July 2012, the arbitration tribunal found that Amkor did fail to pay royalties on certain products covered by claims of the ‘076 patent.
In Kilopass Tech., Inc. v. Sidense, Corp., No. 13-1193, 2013 U.S. App. LEXIS 25671 (Fed. Circ., Dec. 26, 2013), the Court of Appeals for the Federal Circuit recently relaxed the standard for finding “an exceptional case” to justify attorneys’ fees in patent infringement actions. For IP practitioners, this case highlights the current state of the law regarding the necessary showing of bad faith to justify an award of attorneys’ fees in a patent infringement suit.
Like 2013, 2014 promises to be an exciting year for intellectual property law. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. As we reported, on December 6, 2013, the Supreme Court granted certiorari in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. et al., 13-298. The Alice case concerns the patentability of a computer software program used to facilitate financial transactions. Sitting en banc, the Federal Circuit split 5-5 to affirm the district court’s decision and found Alice’s patents ineligible for protection under 35 U.S.C. § 101, a fractured opinion that left lawyers and their clients uncertain about which types of software patents are patentable.
Two recent District Court decisions provide IP practitioners with guidance about royalty base in patent damages calculations. Last week, in Inventio AG v. Thyssenkrupp Elevator Americas Corp., et. al., 1-08-cv-00874 (D. Del. Dec. 13, 2013), Judge Andrews denied defendants’ motion for summary judgment and motion to strike that plaintiff improperly calculated damages. The defendants argued that plaintiff’s expert incorrectly included revenue from defendants’ service contracts in the damages calculation. However, the court determined that the expert relied on the service contracts to increase the royalty rate not the base. Thus, the court denied the motion. This case provides support that revenue generated outside of the royalty base can still be used to increase the royalty rate, thus potentially achieving higher damages.
As we previously reported, House Judiciary Committee Chairman Bob Goodlatte (R-VA) recently introduced H.R. 3309, entitled “Innovation Act,” (hereafter, “the Goodlatte Bill”). After varying support and challenges to the bill, as well as a competing Senate version, on December 5, 2013, the House passed an amended version of the Goodlatte Bill with a bi-partisan vote of 325-91.
In Energy Heating, LLC, et al. v. Heat On-the-Fly, LLC, et al., 13-cv-00010 (D. N.D.), the District Court for the District of North Dakota recently granted partial summary judgment of noninfringement for the Plaintiffs, who provide portable water heaters in North Dakota. Plaintiffs had brought a declaratory judgment action against Defendants, who had allegedly reported the suspected infringement of their patent to Plaintiffs’ customers.
On Friday, the Supreme Court granted a writ of certiorari in Alice Corp. v. CLS Bank Int’l (Docket No. 13-298). In this case, the Court will take up the issue of: Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.
On Wednesday, December 11, the New Jersey Intellectual Property Association will host the 27th Annual Pharmaceutical / Chemical Patent Practice Update at the Woodbridge Hilton in Iselin, NJ. This seminar will cover a range of important topics pertaining to arising pharmaceutical patent matters. This seminar will cover a range of important topics pertaining to arising pharmaceutical patent matters such as: Impact of Erosion of IP Rights on the Pharmaceutical Industry; Maximizing the Probability of Success in Post-Grant Proceedings for Pharmaceutical Patents; Patent Term Adjustment Strategies; The Bolar Exemption in the EU and UK; Claiming Functionally-Defined Biologics; Self-Colliding” Co-Pending Applications at the EPO; Recent Developments in Hatch-Waxman Litigation: (1) Impact of FTC v. Actavis on Pharmaceutical Patent Settlements; and (2) NCE Exclusivity for Enantiomers and Combination Products; and USPTO Ethics Horror Stories – Tales from the OED Crypt.
