Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent

IPXI Clears U.S. Department of Justice Hurdle … Will It Launch?

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Posted in Patent

On March 28, 2013

We have reported extensively on the pending Intellectual Property Exchange International (“IPXI”), the world’s first proposed exchange for licensing intellectual property. In an email blast sent Wednesday morning, Ian McClure, the Director at IPXI, indicated that the Department of Justice (“DOJ”) concluded an eight-month business review of IPXI and issued a Business Review Letter (“BRL”) that highlighted IPXI’s benefits and efficiencies. Importantly, according to IPXI, the DoJ declined to take any enforcement position against the IPXI at this time, as it did not know if IPXI’s activities would raise competitive concerns after operating. The BRL noted several benefits to the IPXI model, including increased licensing efficiency, sublicense transferability and greater transparency.

The Patent Expert Pivot

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Posted in Patent

On March 25, 2013

Parties to patent infringement actions heavily rely on experts to explain their “case.” The finder of fact, whether judge or jury, often views them as detached guides who truly understand the often esoteric subject technology, or other issues, given the expert’s credentials. Patent issues such as infringement, claim construction, validity, enforceability and damages, which are critical to a case, may rise or fall on these experts. Accordingly, and despite their “expert” status, there is no shortage of considerations surrounding them.

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.

“SHIELD Act” Reintroduced to Combat NPEs…

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Posted in Patent

On March 7, 2013

We previously reported on the proposed Saving High-Tech Innovators from Egregious Legal Disputes Act of 2012 (“SHIELD Act of 2012”), introduced in the House of Representatives as HR 6245 last year. This Act, intended to discourage frivolous patent litigations by so-called non-practicing entities (“NPEs,” or sometimes referred to as “patent trolls”), proposed adding new section 35 U.S.C. § 285A to make fee-shifting available under certain circumstances in patent litigations involving computer hardware and software patents. More specifically, it provided that fees could be awarded to a prevailing defendant upon finding that the party alleging infringement did not have a “reasonable likelihood of succeeding.” As written, the SHIELD Act of 2012 failed to garner sufficient support and died in committee.

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.

Delaware Leads the Way on CBM-Related Stay

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Posted in Patent

On February 19, 2013

In one of the apparently few judicial decisions of its kind to date, the District of Delaware recently granted a motion to stay six patent infringement actions, pursuant to Section 18 of the America Invents Act (AIA), pending resolution of post-grant review proceedings in the U.S. Patent & Trademark Office (USPTO) to reexamine the validity of the so-called covered business method (CBM) patents at issue. As defined by AIA § 18(d)(1) and 37 C.F.R. § 42.301, a CBM is “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.”

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