Philip Brooks' Patent Infringement Updates

Federal Circuit Upholds Sanctions And Attorneys' Fees Award For Failure to Conduct Reasonable Pre-Suit Investigation

The following is excerpted from a September 27, 2011 article by Stephen M. Hash, John A. Fedock and Syed Kamil Fareed of Vinson & Elkins LLP published by Mondaq:

The U.S. Federal Circuit recently affirmed an award of attorneys' fees and sanctions against plaintiff Eon-Net in excess of $630,000. (Eon-Net LP, v. Flagstar Bancorp, Case No. 2009-1308 ). In an opinion written by Judge Lourie and joined by judges Mayer and O'Malley, the Federal Circuit affirmed the district court's finding that the case was exceptional under 35 U.S.C. § 285 in light of various instances of litigation misconduct and other bad faith behavior, including what the district court termed "indicia of extortion." The Federal Circuit also affirmed the lower court's grant of sanctions under Rule 11 because Eon-Net filed "legally baseless" infringement contentions and failed to perform a proper pre-suit investigation. At the heart of the decision was the plaintiff's strategy of suing a large number of defendants in an attempt to extract quick "cost of defense" settlements, but without performing a proper pre-suit investigation against many of those companies.

Read the full article here.

Federal Circuit Unveils Model Order for E-Discovery in Patent Cases

The following is excerpted from a September 28, 2011 eData lawflash from Morgan Lewis:

During his September 27 remarks at the Eastern District of Texas Judicial Conference, Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit unveiled a new Model Order for the governance of e-discovery in patent cases (the Model Order). The Model Order was drafted by the EDiscovery Committee of the Federal Circuit Advisory Council and was unanimously adopted by the Advisory Council.

Citing the excessive costs of the discovery process, particularly in the context of patent cases, which produce disproportionately high discovery expenses, Judge Rader suggested that the Model Order serve as a starting point for district courts to enforce “responsible, targeted use of e-discovery” in patent cases, the goal being to streamline and impose discipline upon the e-discovery process, particularly with respect to the production of email. The Model Order would require litigants to focus on gathering material information—the “proper purpose of discovery” according to Judge Rader—rather than engaging in unlimited fishing expeditions.

For brief summaries of some of the more significant provisions of the Model Order see the full eData lawflash here.

LG Seeks Ban on BMW, Audi Sales in Korea

The following is excerpted from a September 28, 2011 article published by The Malaysian Insider:

LG Electronics filed a suit in South Korea, seeking a ban on the sale of BMW and Audi cars, expanding its legal battle over lighting-product patents with Siemens unit Osram to carmakers.

The sales injunction request filed today by LG and its component affiliate LG Innotek said the carmakers are using Osram’s lighting products that infringe its patents.

If the court allows LG’s request, that could be a setback to BMW, the world’s largest luxury carmaker, and Audi, a unit of Volkswagen.

Korean sales account for just around 1 per cent of these carmakers’ global sales, but European models are steadily gaining market share in Korea following a free-trade deal with the European Union in July.

The lawsuit is the latest in a series of patent litigation involving LG Electronics, Samsung LED and Osram. The Siemens lightbulb unit has filed suits against the South Korean firms in the United States, Germany and Japan.

Read the full article here.

Patent Bar Review

Practising Law Institute's exam-focus Patent Bar Review chaired by John White offers:

> Coverage of the new materials being tested in texts, lectures and practice questions;
> Our course is reimagined and improved from day one to provide you a greater foundation in patent law and more feedback; and
> Lectures and questions software are now online for 24/7 convenience and new Web-connected features.

Patent Reform is in the news! But luckily, it’s not on the Exam….yet! But it will be before you know it. If you don’t pass the Exam by next summer, you’ll be in serious danger of having to learn (and remember!) almost twice as much information as currently, plus a dizzying array of effective dates for the various new provisions. So, there’s no time like the present. And this time it’s not just a figure of speech.

They won’t be testing ANY of the new law before early 2012, so if you can pass the Exam before then, you’d be well-advised to do so. (Students: we suggest you study casually throughout the fall, and then plan on spending your Winter Break really focusing on it, and taking the Exam as early in 2012 as possible.)

Even if you don’t get it done by winter, it shouldn’t be a major problem. The pieces of the new law that are effective immediately, and testable probably in the spring of 2012 are relatively small, discreet changes. We’ll get our takers a short supplement covering those new materials, and maybe some practice questions and supplemental lectures, if necessary. Not to worry.

If you don’t get this done by early summer, you may have to worry. They could start testing the BIG changes (first to file and post-grant review) as early as Fall 2012. We’ll of course get our takers all of the necessary supplemental materials, questions and lectures. Don’t worry about that. What you DO need to worry about is that, for probably two years after that, they will be testing BOTH sets of rules (the “old” rules that still apply to applications already in process, and the new rules that apply to applications filed after the effective date of the various provisions). So, once they start testing this, the Exam will likely get significantly more difficult in progressive steps.

Upcoming Live Courses

• Washington, DC: Jan. 11 - 15, 2012
• Chicago, IL: Mar. 14 - 18, 2012
• New York, NY: May. 16 - 20, 2012
• San Francisco, CA: Jun. 19 - 23, 2012

Learn more and register here.

Narrowing Claim Amendment Blocks Application of the Doctrine of Equivalents, Again

The following is excerpted from a September 12, 2011 article by Heather Morehouse Ettinger, Ph.D. of McDermott Will & Emery posted at the National Law Forum:

Addressing whether an amendment narrowing the claim scope during the prosecution limited the patentee’s ability to capture a generic’s different, but potentially equivalent, product as infringing, the U.S. Court of Appeals for the Federal Circuit affirmed a decision on summary judgment, finding that prosecution history estoppel applied and barred the application of the doctrine of equivalents (DOE). Duramed Pharmaceuticals, Inc. (Teva Women’s Health) v. Paddock Laboratories, Inc., Case No. 10-1419 (Fed. Cir., July 21, 2011 (Lourie, J.).

The district court granted Duramed’s motion for summary judgment of non-infringement, finding that the narrowing of the claims to recite a particular moisture barrier coating in view of the prior art was substantially related to patentability and, therefore, under Festo, a presumption of prosecution history estoppel applied. The district court further found that Duramed had not overcome this presumption, and thus the DOE could not be applied, because the prior art illustrated that polyvinyl alcohol moisture barriers were foreseeable. Duramed appealed.

The Federal Circuit affirmed, agreeing with the district court that, under Festo, because Duramed narrowed the scope of the claims during prosecution, a presumption of prosecution history estoppel applied.

Read the full article here.

Patents Defended

The following is excerpted from an article by Michael M. Rosen appearing in the September 12, 2011 issue of The American (The Journal of the American Enterprise Institute):

On September 8, Congress at long last passed the “America Invents Act,” the first overhaul of our patent system in decades. Yet not everyone has cheered the new law, or how it came about.

The U.S. patent regime has always been a careful balancing act between encouraging innovation, enforcing the rights of inventors, and ensuring the public interest. Yet in two recent reports—one on National Public Radio’s “This American Life” and one in the New York Times—critics have argued that that equipoise is in grave danger.

Yet, like all complex issues presented by the mass media—even (especially?) by outlets as sophisticated as NPR and the Times—the ins and outs and what-have-yous of our patent system are far more nuanced, and the players far more difficult to cabin into bad guy and good guy roles, than NPR’s Ira Glass and company would have you believe.

Read here the analysis by Mr. Rosen of these two reports.

Court Rules in Allergan's Favor on Lumigan Patent

The following is from a September 9, 2011 Reuter's update with reporting by Tom Hals; additional reporting by Rans Pierson in New York; and editing by Derek Caney:

Delaware District Court judge Sue Robinson ruled on Thursday that the generic drugmakers failed to prove Allergan's patents protecting Lumigan were invalid and found the generic forms infringed those patents.

Barr Laboratories Inc, a unit of Teva, and Novartis (NOVN.VX) (NVS.N) unit Sandoz filed abbreviated new drug applications (ANDA) in 2009 to make a generic version of the drug. Allergan sued, claiming patent infringement.

Lumigan has annual global sales of about $650 million, making it one of Allergan's biggest prescription eye medicines.

Access the update here.

Elpida Memory Files Patent Infringement Lawsuit Against Nanya Technology in U.S. Court

The following is excerpted from a September 7, 2011 Elpida press release available on its website:

Elpida Memory, Inc. ("Elpida", TOKYO: 6665 JP), the world's third largest Japanese Dynamic Random Access Memory ("DRAM") maker, announced today that it has filed a lawsuit against a Taiwanese memory chip maker Nanya Technology Corporation ("Nanya") and its U.S. subsidiary Nanya Technology Corporation, USA ("Nanya USA") for infringement of Elpida's DRAM patents.

Elpida filed the lawsuit on September 6 in the U.S. District Court, the Northern District of California. The lawsuit seeks the court to have Nanya and Nanya USA halt infringement of four Elpida's DRAM technology-related patents and to have them compensate for damages caused by the infringement.

Takao Adachi, Director of Elpida said, "We believe that companies need to respect intellectual property rights because it is justified on the basis of Intellectual Property Law. When we recognize anyone who has violated our valuable assets, it is very fair for us to allege infringement. Considering our global business operations, it is essential to protect intellectual properties in order to keep competitiveness."

Seiji Nakashima, Vice President of Intellectual Property Group said, "Elpida has been actively protecting our intellectual property rights. We stand ready to take appropriate action at any time like this one."

Read the full press release here.

Patent Wars

 Reprinted with permission from Business Insurance Quotes:

 
Via: Business Insurance Site

SCOTUS Is No Longer the ‘Court of Correction’

The following is excerpted from an article by Steven Seidenberg from the September 2011 print issue of the ABA Journal:

It had been a tough 10 years for the U.S. Court of Appeals for the Federal Circuit. Created in part to provide definitive rulings on patent law, the Federal Circuit found its patent rulings be coming anything but definitive—thanks to the U.S. Supreme Court.

Starting in 2000, the high court granted certiorari for an unusually large number of patent cases, about one per year on average. And almost without exception, the Supreme Court overturned the Federal Circuit’s decisions. It repeatedly rejected the views of the specialized appellate court and imposed its own interpretations of patent law.

All this changed dramatically last term. Instead of accepting one patent case, the Supreme Court accepted three. And instead of overturning the Federal Circuit, the Supreme Court upheld the lower court’s results in every case.

In the recent past, the Supreme Court seemed to accept patent cases to correct the Federal Circuit. But now it may be accepting these cases simply because they present issues that are important and need clarification, according to Sarnoff [law professor Joshua D. Sarnoff of De Paul University College of Law in Chicago]. “We can no longer assume the Supreme Court is acting only as a court of correction for the Federal Circuit,” he adds.

Read the full article here.