Philip Brooks' Patent Infringement Updates

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.

The New “Willful Blindness” Standard for Inducing Patent Infringement

The above-titled article by Gregory L. Porter of Andrews Kurth LLP was posted on Monday, July 25, 2011 at The National Law Review. The following is an excerpt:

On May 31, 2011, the Supreme Court articulated the standard for inducing infringement in Global-Tech Appliances Inc. v. SEB SA, Case No. 10-6, 563 U.S. ____ (2011). The Court affirmed the Federal Circuit in finding willful infringement but stated that the proper standard for inducing patent infringement is “willful blindness” as opposed to the prior Federal Circuit standard “deliberate indifference to a known risk.”

...patent practitioners should continue to attempt to draft claims that will be directly infringed by their competitors so as not to have to rely on the ever-evolving inducement standard of “willful blindness.”

Read the full article here.

Smith & Nephew Endoscopy Awarded $85M in Patent Infringement Case Against Arthrex, Inc.

The following is excerpted from a June 23, 2011 post at citybizlist of Boston:

Smith & Nephew, Inc., Endoscopy Division, a subsidiary of Smith & Nephew plc (NYSE: SNN) (London Stock Exchange: SN) announced today that the jury in United States District Court in Oregon found in Smith & Nephew's favor that Arthrex, Inc., (Naples, Fla.) was guilty of infringing U.S. Patent 5,601,557, which is exclusively licensed to Smith & Nephew.

The jury found that Arthrex's Bio-SutureTak, PEEK SutureTak, PushLock and Bio-PushLock suture anchors infringe the patent and awarded Smith & Nephew $85 million for Arthrex's past infringement activities.

This is the second time Smith & Nephew won this patent infringement case in the Oregon Court. In June 2008, a jury decided that Arthrex willfully infringed the same asserted patent. At that time the jury awarded Smith & Nephew $14.7 million for past infringement. In November 2009, the Court of Appeals for the Federal Circuit revised the interpretation of a term in the patent and sent the case back to the Oregon court for a new trial based on that revised claim interpretation.

Read the full post here.

Palomar's Patent Infringement Lawsuit Against Candela Proceeds to Trial

The following is excerpted from a Palomar press release posted on April 27, 2011 at Fierce Medical Devices:

Palomar Medical Technologies, Inc. (Nasdaq:PMTI), a leading researcher and developer of lasers and light systems for aesthetic treatments, announced today that its patent infringement lawsuit against Candela Corporation (acquired in 2010 by Syneron, Inc.) will now proceed to trial. Palomar has accused Candela of willful infringement of U.S. Patent No. 5,735,844 ("the '844 patent"). Today, the Judge issued a ruling on Candela's motion for summary judgment which marks a final step before trial.

The ruling denied Candela's motion for summary judgment that the '844 patent is invalid over prior art. The ruling further denied Candela's motion for summary judgment that Candela's products do not infringe claim 32 of the '844 patent. The Judge also ruled that Palomar had insufficient evidence to prove that Candela's products infringe claims 1, 19 and 27 of the '844 patent. Consequently, once the Judge conducts a scheduling hearing and a trial date is determined, the lawsuit will proceed to trial on Palomar's assertion that Candela's products infringe claim 32 of the '844 patent.

The '844 patent relates to light-based hair removal and has already been licensed to many other companies. The U.S. Patent Office has also found the existing claims, including claim 32 of the '844 patent, valid over prior art raised by Candela in a re-examination proceeding. Claim 32 of the '844 patent is broad and covers all of Palomar's licensee's hair removal products as well as Palomar's own hair removal products.

Palomar is also suing Syneron, Inc. for patent infringement of the '844 patent as well as related U.S. Patent No. 5,595,568 ("the '568 patent"). On November 17, 2010, a claim construction hearing (also known as a Markman hearing) was held and Syneron argued that certain words in the claims should be construed such that the claims would only cover lasers and would not cover their lamp based products. On April 14, 2011, the Judge issued a ruling which did not limit independent claims 1 of the '568 patent or 1, 17, 19, and 32 of the '844 patent to only lasers, such that these claims will cover both lasers and lamps. The ruling only limited independent claims 14 of the '568 patent and 27 of the '844 patent to lasers. Accordingly, Palomar's lawsuit will proceed against both Syneron's lamp and laser products.

Read the full press release here.

Old Reliable v. Cornell: Federal Circuit Again Rejects Award of Attorneys' Fees

The following is excerpted from a March 21, 2011 post by Jason Rantanen at Patently-O:

For the second time this year the Federal Circuit has issued a precedential decision reversing an award of attorneys' fees entered against a patentee.  Perhaps most noteworthy is the extent to which the judges on the court appear to be in agreement on the relevant standard and its application: although the panel compositions for Old Reliable and iLor v. Google do not overlap, the two opinions contain remarkably similar language and employ analogous analyses to reverse the exceptional case findings, suggesting a strong meeting of the minds on this issue.

The court's emerging doctrine of exceptional case determinations envisions a threshold "objective" requirement that must be met, regardless of whether the underlying theory is one of willful infringement or meritless suit.  In the context of willful infringement, the infringer must have acted "despite an objectively high likelihood that its actions constituted infringement of a valid patent;" in the context of an exceptional case determination the conduct must be "objectively baseless."  Subjective considerations of bad faith play no role in this determination. An actor may have a completely wrongful intent, but if the conduct itself does not meet the objective threshold that intent just doesn't matter.  Given the extraordinarily high hurdle required to satisfy the objective standard - "Unless an argument or claim asserted in the course of litigation is 'so unreasonable that no reasonable litigant could believe it would succeed,' it cannot be deemed objectively baseless for purposes of awarding attorney fees under section 285" (Slip Op. at 8 (emphasis added) - one would expect such findings to be rare indeed.

Read the full post here.

Willful Patent Infringement and Enhanced Damages After In re Seagate

The following is from a February 3, 2011 post at C-K (Chicago-Kent College of Law) Faculty Blog and is an abstract of the above-titled article by Professor Chris Seaman:

Willful patent infringement is a critical issue in patent litigation, as it can result in an award of up to treble (enhanced) damages. In a 2007 decision, In re Seagate, 497 F.3d 1360 (en banc), the Federal Circuit significantly altered the standard governing willful infringement by requiring the patentee to prove at least "objective recklessness" by the accused infringer. Many observers predicted that this heightened standard would result in far fewer willfulness findings and enhanced damage awards. To date, however, there has been no comprehensive empirical study of Seagate's actual impact in patent litigation.

This paper fills that gap by analyzing six years of decisions in the district courts - three years before and after Seagate - on willful patent infringement and enhanced damages. Surprisingly, it finds that willful infringement was found only about 10% less often after Seagate. In addition, after Seagate, juries find willful infringement substantially more often than judges do at trial. However, enhanced damages are awarded less frequently and in lower amounts when juries find willfulness compared to judges.

Finally, this paper evaluates the impact of several common factors on willful infringement decisions after Seagate. Based on the empirical data collected in this study, the existence of a "substantial" or "legitimate" defense to infringement is the strongest predictor of a finding of no willfulness after Seagate, while evidence of copying by the accused infringer was the strongest predictor of willfulness. In contrast, the remaining factors studied - opinions of counsel, attempts to design around the patent, reexamination at the PTO, and bifurcation of willfulness from liability at trial - had no statistically significant effect on willfulness decisions.

Read the full article here.

26th Annual Intellectual Property Law Conference

Now in its 26th year, the Annual Intellectual Property Law Conference of the ABA Section of Intellectual Property Law provides a gathering of the foremost authorities on the state of intellectual property law, including judges, government officials, in-house counsel, academics, and private practitioners.

Pick up an entire year’s worth of CLE credits during the 2 ½ days of quality IP programming on the issues critical to your practice. Some program highlights include:

• Reform Inside & Outside the USPTO
• The DMCA – Is it Broken?
• Tips from TTAB
• ACTA: What Will it Mean for the IP Practitioner?
• International IP Law and Practice
• Biosimilars and its Effects on Patent Litigation
• Trademark Prosecution Best Practices
• Open Source Licensing: A Review of Significant Decisions
• Willfulness and the Adverse Inference Post-Seagate
• Contested Patent Office Proceedings  
• Likelihood of Dilution
• Therasense, Inc. v. Becton, Dickinson & Co.
• The New gTLDs
• Trends in Patenting Nanotechnology & Green Technology

The conference will take place in Arlington, Virginia on April 6-9, 2011.  More details and registration are available here.

Taking A Big Bite Of Apple

The following is excerpted from an October 11, 2010 article by Thomas B. Scheffey published by Connecticut Law Tribune:

Old photos of Professor David Gelernter’s lived-in office in the computer science department at Yale depict a sprawling array of the scholar’s scattered papers, and teetering books.

If necessity is the mother of invention, you can see why he would have invented his “lifestream” software. It archives every type of computerized file in chronological order, and can pull together any relevant groups of files as needed. It’s a pack rat’s dream. Nothing needs to be thrown away, just digitized. Then everything’s at your fingertips.

Gelernter, of Woodbridge, and Yale graduate student Eric Freeman, of Branford, explained those ideas in 2001 in three patents they earned that year. These made interesting reading back then. For a brief period, they came to life in a commercially unsuccessful software product called Scopeware Vision that halted production in 2004. According to author James Fallows, writing in The New York Times in 2004, Gelernter’s backers folded, “despairing of staying in the race when Microsoft had so clearly indicated that it would include disc-search functions in Longhorn, its next version of Windows, scheduled for release in 2006.”

But instead of fading into an historical footnote, the patents and inventors of New Haven–born Scopeware are now suddenly making big news and, in all likelihood, big money.

Last week, the patents were the basis for a Tyler, Texas federal court jury awarding Gelernter’s Mirror Worlds LLC a stunning $625.5 million verdict against computer giant Apple Inc. The jury found that Apple intentionally infringed on the patents to create its Cover Flow, Time Machine and Spotlight display tools.

Read the full article here.

The Controversy Over "Ongoing Royalty" Awards

The following is excerpted from an article from the November/December 2009 issue of The Federal Lawyer titled, "The Controversy Over "Ongoing Royalty" Awards in the Evolving Landscape of Remedies for Patent Infringement" by Sunstein Kann Murphy & Timbers LLP partner Lisa M. Tittemore:

It’s usually the millions—and sometimes billions—of dollars that gets people’s attention. One of the things that can make patent infringement litigation in the United States so very interesting is the potential for large damages awards. Until recently, damages awards generally were calculated as a percentage of infringing pre-verdict sales. Courts historically would enter an injunction preventing further post-verdict infringing sales. That outcome has changed since the Supreme Court’s decision in eBay Inc. v. MercExchange, 547 U.S. 388 (2006), which made it harder for patent owners to obtain injunctions. In the wake of the eBay decision, litigants and courts should be aware of the evolving—and quite controversial—case law relating to “ongoing royalties” for patent infringement after a verdict has been handed down.

Among the issues confronting courts and litigants in this post-eBay world is how plaintiffs will be compensated if infringement is found, but the plaintiff cannot meet the standard for obtaining an injunction. If the answer is that the court will enter damages for post-verdict infringement, what is the procedural mechanism for determining the amount of the award and how does it square with the Seventh Amendment right to a jury trial? How does the calculation of an award under these circumstances fit with existing jurisprudence relating to enhanced damages for willful infringement? A number of courts are holding post-trial—typically evidentiary—hearings related to royalties for future sales; other courts have severed the question of post-verdict damages and require the filing of a separate complaint on damages; and still others are asking the jury to consider the issue of post-verdict damages contemporaneously with the decision on the merits. Many courts are awarding what are clearly enhanced damages awards for post-verdict patent infringement but do not label such infringement as “willful” per se. This article examines the cases in which these different approaches have developed and also discusses the issues these cases have raised.

Read the full article here.

Skyhook Suing Google Over Location Biz

The following is excerpted from a September 16, 2010 article by Rodney H. Brown and Galen Moore of the Boston Business Journal:

Skyhook Wireless Inc. has taken on Google Inc., suing the Calif.-based giant for patent infringement on patents related to wi-fi use in determining a cell phone’s location, and for business interference for using that technology.

According to a suit filed today in U.S. District Court of Massachusetts, Boston-based Skyhook said that Google is infringing on its United States Patent No. 7,414,988, “Server for Updating Location Beacon Database” by maintaining a server Google calls its “WiFi location database.” Skyhook is also suing for infringements on three other patents related to wi-fi location technology and services.

Skyhook has asked for the court to enjoin Google from continuing to operate its wi-fi-based location services and for unspecified damages for “willfully” engaging in the infringement, according to the suit.

In a second complaint forwarded to media members today, Skyhook alleged that Google used its relationships with handset manufacturers to muscle Skyhook’s GPS software out of the market. That lawsuit is intended for Suffolk County Superior Court, but as of this afternoon, the civil clerk there had no record of accepting it.

While the patent suit did not specify damages, the business interference suit stated, “As a direct result of Google’s actions, Skyhook has suffered actual damages that exceed tens of millions of dollars.” It is seeking treble damages from the court.

Read the full article here.