Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent

Discovery of Source Code in Patent Litigation

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Posted in Patent

On January 30, 2013

Discovery of computer source code–either through production, inspection, or deposition–is one of the more contentious aspects of patent litigation. Indeed, “few tasks excite a defendant less . . . . Engineers and management howl at the notion of providing strangers, and especially a fierce competitor, access to the crown jewels. Counsel struggle to understand even exactly what code exists and exactly how it can be made available for reasonable inspection. All sorts of questions are immediately posed. . . . Put simply, source code production is disruptive, expensive, and fraught with monumental opportunities to screw up.” Apple Inc. v. Samsung Elecs. Co., No. 11-1846, 2012 U.S. Dist. LEXIS 62971, *10-11 (N.D. Cal. May 4, 2012) (ECF No. 898).

Covenants Not to Sue Are Licenses in Bankruptcy

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Posted in Patent

On January 29, 2013

The ongoing Kodak bankruptcy has engendered interest in understanding the role of IP-related licenses in bankruptcy. The recent decision in In re Spansion also merits consideration. There, following settlement of Spansion’s 2008 ITC patent infringement action against Samsung and Apple, Spansion and Apple entered into a letter agreement in February 2009 whereby Spansion agreed to dismiss its ITC action against Apple and promised to refrain from filing future actions relating to its asserted patents. In turn, Apple agreed to not disbar Spansion as a supplier and to consider Spansion for future products. In March 2009, Spansion filed for Chapter 11 bankruptcy in the Bankruptcy Court for the District of Delaware.

Epic and Limelight File Petitions for Certiorari in Induced Infringement Matters

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Posted in Patent

On January 28, 2013

We previously reported on the Federal Circuit’s twin en banc decisions in Akamai Techs., Inc. v. Limelight Networks, Inc. and McKesson Techs. Inc. v. Epic Sys. Corp., 692 F.3d 1301 (Fed. Cir. 2012). These rulings dramatically altered the enforceability of method patent claims by relaxing the rules for proving liability in induced infringement cases. As anticipated, both Epic Systems (“Epic”), and Limelight Networks (“Limelight”) filed separate petitions for certiorari.

New USPTO Filing Fees Announced ….

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Posted in Patent

On January 24, 2013

IP practitioners are well aware of the new rules heralded by the America Invents Act (“AIA”). Section 10 of the AIA authorizes the Director of the USPTO to set or adjust any patent fees under Title 35 or Title 15 of the United States Code to “recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents… and trademarks…, including administrative costs of the Office with respect to such patent or trademark fees.” Beginning on March 19, 2013, new fees will be instated, as published Friday, January 18, 2013, in the Code of Federal Registration, 37 C.F.R. Parts 1, 41, and 42 (“CFR”).

USPTO Launches First CBM Post-Grant Review

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Posted in Patent

On January 17, 2013

The America Invents Act (AIA), created a transitional program for post-grant review of certain patents claiming subject matter referred to as covered business methods (“CBM”). 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.” 37 C.F.R. § 42.301 does, however, provide an exception for technological inventions. Whether a claim recites a technical feature is determined based on whether the claim is “novel and unobvious over the prior art; and [whether the claim] solves a technical problem using a technical solution.” Id.

Supreme Court Leaves Potential Void Regarding Licensee Validity Challenges to Patents

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Posted in Licensing / Patent

On January 16, 2013

On Monday, the Supreme Court denied Rates Technology Inc.’s petition for writ of certiorari to hear whether a pre-litigation no-challenge provision is void under Lear, Inc. v. Adkins, 395 U.S. 653 (1969) as the Second Circuit found. We previously discussed the petition, the Second Circuit’s holding, and the no-challenge clause which prevents a licensee from challenging the validity of a patent.

Delaware District Court Takes Patent Damages Expert to Task

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Posted in Patent

On January 11, 2013

Deferring judgment until after he hears testimony prior to trial, U.S. District Judge Richard G. Andrews of the District of Delaware nonetheless indicated in a recent Memorandum Opinion that he was inclined to exclude plaintiff’s patent damages expert. In AVM Techs., LLC v. Intel Corp., C.A. No. 10-610-RGA, plaintiff AVM sued Intel for patent infringement relating to U.S. Patent No. 5,859,547, which claims improved dynamic logic circuits used in microprocessors. Intel filed a Daubert motion seeking to exclude AVM’s damages expert, who had opined that AVM was entitled to reasonable royalty damages of over $150 – $300 million.

PTO Announces Software Partnership Roundtable Meetings

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Posted in Patent

On January 9, 2013

In an effort to “enhance the quality of software patents,” the United States Patent and Trademark Office (“PTO”) has announced a partnership with the software community. The Software Partnership will provide roundtable discussions between stakeholders and the PTO to share ideas and insights on software-related patents. The PTO will sponsor two roundtable events, one in Silicon Valley on February 12, and the other in New York City on February 27. In addition, the PTO plans to make each roundtable event available via Web cast, and will post Web cast information on its Internet Web site before the events.

AIA Technical Corrections Bill and Trade Secret Penalties Bill Await President’s Signature

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Posted in Patent

On January 4, 2013

As most Americans focused on the Congressional efforts to avoid the “fiscal cliff,” IP practitioners noted that Congress passed Senate-amended versions of a bill to amend the Smith-Leahy America Invents Act (AIA) (H.R. 6621) and a bill to increase penalties under the Economic Espionage Act (EEA)(H.R. 6029) on to the White House on January 1, 2013, for signature by President Obama. It is expected that President Obama will sign both bills into law shortly.

2013: The IP Law Year Ahead

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Posted in Patent

On December 31, 2012

Like 2012, 2013 promises to be a busy and significant year for intellectual property law. The Supreme Court is slated to decide a number of IP cases, including: Already, LLC d/b/a Yums v. Nike, Inc. (addressing the significance of a limited covenant-not-to-sue on declaratory judgment jurisdiction); Bowman v. Monsanto (determining whether the Federal Circuit erred by not finding patent exhaustion in second generation seeds and created an exception to patent exhaustion for self-replicating technologies); Gunn v. Minton (pertaining to whether federal courts have exclusive “arising under” jurisdiction when legal malpractice claims stem from a patent case); Kirtsaeng v. John Wiley & Sons, Inc. (regarding international copyright exhaustion, i.e., how Section 602(a)(1) and Section 109(a) of the Copyright Act apply to a copy that was legally acquired abroad and then imported into the United States); Federal Trade Comm’n v. Watson Pharm., Inc. (involving whether Hatch-Waxman reverse payment settlement agreements are legal); and most recently, Ass’n for Molecular Pathology v. Myriad Genetics, et al. (regarding the patentability of human genes and whether the petitioners have standing to challenge those patents).

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