Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent Litigation

The New European Unitary Patent and Unified Patent Court: Are You Opting In?

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Posted in Patent

On January 7, 2016

The Gibbons Institute of Law, Science & Technology recently hosted a program to explore significant changes underway for the European patent landscape. At this program, Dr. Christoph Cordes, Partner at the German law firm Esche Schümann Commichau, presented an overview of the new European Unitary Patent and Unified Patent Court, and was joined by several panelists in a discussion about the anticipated impact of this new European patent regime.

Heightened Pleading Requirement for Direct Patent Infringement Action Effective December 1, 2015

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Posted in Patent

On December 2, 2015

On December 1, 2015, revised Federal Rule Civil Procedures went into effect and changed pleading requirements for patent cases. The new rules were adopted by the Supreme Court on April 29, 2015, based on recommendations of the Judicial Conference of the United States and will eliminate Form 18. Form 18 set for a bare bones requirement for patent infringement complaint and merely required the plaintiff to provide notice of its claims. Form 18 simply required: (1) an allegation of jurisdiction; (2) a statement that plaintiff owns the patents; (3) a statement that defendant has been infringing the patent by making, selling and using the device embodying the patent; (4) a statement that plaintiff has given the defendant notice of its infringement; and (5) a demand for injunction and/or damages.

Supreme Court to Review Willful Infringement under 35 U.S.C. § 284

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Posted in Patent

On October 26, 2015

Last week, the U.S. Supreme Court granted certiorari to review the standard for willful infringement under 35 U.S.C. § 284. The Court was specifically asked to reject the rigid two-part test set forth by the Federal Circuit in In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), which requires the court to determine whether an alleged infringer: (1) acted despite an objectively high likelihood that its actions constituted infringement of a valid patent; and (2) this objectively-defined risk was either known or so obvious that it should have been known to the accused infringer.

Federal Circuit En Banc Reaffirms Laches as a Defense to Patent Suits

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Posted in Patent

On October 19, 2015

Recently, the Federal Circuit, sitting en banc, ruled in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC that laches remains a viable defense in patent infringement actions. In doing so, the Federal Circuit rejected the extension of the Supreme Court’s 2014 decision in Petrella v. Metro-Goldwyn-Mayer, Inc., which held that the laches defense does not apply in copyright cases because the copyright statute provides a three year statute of limitations for bringing an infringement suit.

District Court’s Preliminary Injunction Opinion Offers Cautionary Tale Over Engaging in Settlement Negotiations with a Rival

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Posted in Patent

On September 3, 2015

A recent decision from the Western District of Washington denying a motion for a preliminary injunction offers a cautionary tale to keep in mind when considering whether to engage in settlement negotiations with a competitor. BitTitan brought suit against SkyKick for infringement of U.S. Patent No. 8,938,510, a patent directed to the migration of email data from one email system to another. According to BitTitan, the ‘510 patent covered the essential elements of BitTitan’s email migration product and SkyKick was its main competitor in this industry.

USPTO Proposes a Pilot Program to Allow a Single APJ to Institute an Inter Partes Review

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Posted in Patent / USPTO

On September 2, 2015

The United States Patent and Trademark Office (“USPTO”) has published a request for comments in the Federal Register for a proposed pilot program which would allow for a single Administrative Patent Judge (APJ) to determine whether to institute an inter partes review (IPR), with two additional APJs being assigned to the IPR if a trial were instituted.

Federal Circuit Expands Liability for Direct Infringement Under § 271(a)

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Posted in Patent

On August 21, 2015

Last week, en banc, the United States Court of Appeals for the Federal Circuit in Akamai Technologies Inc. v. Limelight Networks, Inc. “unanimously set forth the law of divided infringement under 35 U.S.C. § 271(a),” and expanded direct infringement liability to include instances where, “an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”

Federal Circuit Directs Magistrate Judge to Decide Motion to Transfer After Long Delay and Substantive Rulings While Motion Was Pending

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Posted in Patent

On July 23, 2015

The Court of Appeals for the Federal Circuit recently granted yet another writ of mandamus, this time directing a magistrate judge in the Eastern District of Texas to stay proceedings and decide a motion to transfer that had been pending for over nine months. In re: Google, Inc., 2015-138 (Fed. Cir. July 16, 2015). This decision is a part of a continuing trend, since 2008, of the Federal Circuit taking issue with rulings from the Eastern District of Texas denying transfer motions in patent infringement actions or denying the stay of proceedings in favor of an action pending in another jurisdiction.

Federal Circuit Panel Concludes That It Lacks Jurisdiction to Review PTAB Decision Terminating IPR Proceeding

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Posted in E-Commerce / Patent / USPTO

On July 15, 2015

Recently, the Federal Circuit held that it lacks jurisdiction to review non-final Patent Trial and Appeal Board (“PTAB”) decisions, such as decisions to vacate or terminate a post-grant proceeding. In GEA Process Engineering, Inc. v. Steuben Foods, Inc., the Federal Circuit denied GEA’s petition for writ of mandamus directing the PTAB to withdraw an order in which it terminated GEA’s five pending IPR proceedings on the grounds that these IPRs should have never been instituted. The PTAB reasoned that GEA failed to identify all real-parties-in-interest and, thus, the petitions were incomplete.

Federal Circuit Issues Contentious Order Not to Review En Banc PTAB’s Claim Construction Standard For IPR Proceedings

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Posted in Patent

On July 14, 2015

On Wednesday, July 8, 2015, the Federal Circuit in a contentious 6-5 vote denied en banc review of its first opinion in connection with PTAB decision in an IPR proceeding, In re Cuozzo Speed Technologies, LLC. As previously discussed, Cuozzo appealed the PTAB’s invalidation of three claims of U.S. Patent No. 6,778,074 on the grounds that the PTAB in its IPR decision improperly applied the “broadest reasonable interpretation” standard on claim construction, a standard that is traditionally applied to patent prosecution. A 2-1 panel for the Federal Circuit affirmed the application of this standard in view of the fact that the USPTO has been using this standard for more than a century and the majority’s conclusion “that Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA.” The court also found that this was further supported by the statute giving the PTO Director the ability to establish the standards for establishing and governing inter partes review.

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