This week I received a note from MaxVal, a company that serves patent attorneys and agents with a broad range of software and services for patent portfolio management.
One useful (and free) service that MaxVal offers is a page of free online patent tools, including:
- a Patent Widget that gathers information from multiple databases and presents bibliographic information, assignment data and maintenance fee data in one place;
- a Claim Chart Generator; and
- a IFW File Splitter that divides the PDF of a USPTO file history into individual documents based on bookmarks.
MaxVal is also offering a free one-year subscription to its daily IP litigation alert emails. To subscribe, click here.
This week fourteen U.S. District Courts were selected to participate in a patent pilot program that is designed to enhance those courts’ expertise in complex patent litigation.
The patent pilot program is a 10-year project in which judges who request patent cases will receive specialized patent law and case management training. When a new patent case is filed in a participating district court, after an initial random assignment the case may be reassigned to one of the specially trained judges.
Courts that will participate in the program are:
- Eastern District of New York
- Southern District of New York
- Western District of Pennsylvania
- District of New Jersey
- District of Maryland
- Northern District of Illinois
- Southern District of Florida
- District of Nevada
- Eastern District of Texas
- Northern District of Texas
- Western District of Tennessee
- Central District of California
- Northern District of California
- Southern District of California
Some of the courts (such as those in Texas and California) were selected because they were among the 15 courts in which the largest number of patent suits were filed in 2010. The other courts, including my local court of the Western District of Pennsylvania, were selected because they have already adopted (or will soon adopt) local patent rules. A press release from the Western District of Pennsylvania notes that a goal of the program is to study whether focused patent experience among judges will decrease reversal rates and disposition times of patent cases:
the Chief Judge of each participating court . . will report to Congress on a periodic basis during the ten-year Program with respect to whether the Program has succeeded in developing expertise and improved efficiencies in patent cases, and whether a court’s inclusion in the Program has affected the number of patent cases filed in that court.
The patent pilot program will begin in July 2011.
In Arris Group Inc. v. British Telecommunications PLC, the Federal Circuit allowed a manufacturer to file a declaratory judgment action after its customers were accused of patent infringement, even through the manufacturer itself was not directly accused of infringement.
In the case, British Telecommunications (BT) held several patents relating to voice over Internet protocol (VOIP) systems and services. BT sent several letters to Cable One in which BT accused Cable One of infringing the claims, and BT engaged in licensing negotiations with Cable One. Cable One purchased the allegedly infringing systems from Arris. Arris participated in the licensing discussions with BT, but BT refused to include Arris as a party to the license agreement. After settlement talks broke down, Arris filed a declaratory judgment action.
BT challenged Arris’ standing to bring the action, stating that BT never accused Arris of infringing the patents. To determine whether Arris had standing to file the suit, the Federal Circuit applied the Supreme Court’s decision in Medimmune Inc. v. Genentech Inc., which states that declaratory judgment standing exists if “the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”
Arris asserted that the potential for economic injury (loss of its customer relationship with Cable One) showed that such a substantial controversy existed. The court disagreed, stating that economic injury alone is insufficient to create standing” in a patent infringement case. However, the court found that Arris had standing for other reasons. Specifically, the court stated that:
where a patent holder accuses customers of direct infringement based on the sale or use of a supplier’s equipment, the supplier has standing to commence a declaratory judgment action if (a) the supplier is obligated to indemnify its customers from infringement liability, or (b) there is a controversy between the patentee and the supplier as to the supplier’s liability for induced or contributory infringement based on the alleged acts of direct infringement by its customers.
In the case, the court found a controversy between Arris and BT based on Arris’ potential liability for contributory infringement:
When the holder of a patent with system claims accuses a customer of direct infringement based on the customer’s making, using, or selling of an allegedly infringing system in which a supplier’s product functions as a material component, there may be an implicit assertion that the supplier has indirectly infringed the patent.
Similarly:
[W]hen the holder of a patent with method claims accuses the supplier’s customers of direct infringement based on their use of the supplier’s product in the performance of the claimed method, an implicit assertion of indirect infringement by a supplier may arise.
Applying this standard, the court noted that BT’s infringement accusations against Cable One “explicitly and repeatedly” singled out Arris’ products. Thus, the court found that BT’s assertions against Cable One also implied that Arris was infringing the patents, and the court held that Arris had standing to bring the action.
This week the Federal Circuit issued an opinion that raises the bar for defendants who assert inequitable conduct as a defense in patent infringement litigation. The defense of inequitable conduct evolved over time as courts barred enforcement of a patent when the patent holder engaged in actions that misled or defrauded the courts or the USPTO. As applied by the courts, inequitable conduct required both intent and materially affected the outcome of a case — such as a situation where an inventor was aware of a prior disclosure of an invention but intentionally withheld that information from the USPTO.
Over time, the standards for intent and materiality changed. In particular, (more…)
Filed under: Litigation
The ABA Section of Litigation’s Intellectual Property Litigation Committee has announced the First Annual Intellectual Property Litigation Committee Regional CLE Workshop, to be held June 10, 2011 at the Washington, D.C. offices of Pepper Hamilton LLP. The event will feature an exceptional, diverse and well-rounded group of moderators and panelists, including private practitioners, government attorneys and law professors, to discuss various hot topics in the area of intellectual property litigation.
The Keynote Speaker will be The Honorable Randall R. Rader, Chief Judge of the U.S. Court of Appeals for the Federal Circuit.
Program topics include:
- Buy, Buy, License? The First Sales Doctrine and What Happens When You Thought You Bought But Didn’t
- Beyond Injunctions: Exploring Damages and Other Options for Relief in Trademark Litigation
- New Developments in Patent Litigation from the Supreme Court, the Federal Circuit, and Congress
- You Can’t Take It With You: What’s New in the Law Regarding Trade Secrets and Non-Competes
Click here for the full program brochure. For additional information about the program, contact Charles S. Marion of Pepper Hamilton at 215-981-4119 or marionc@pepperlaw.com. Or, visit the meeting website.
This weekend’s Super Bowl provides an opportunity to review some of the past year’s interesting developments relating to the National Football League and intellectual property:
1. Titlecraft v. NFL: wooden Lombardi trophy replicas infringe NFL copyright.
In Titlecraft Inc. v. National Football League (D. Minn. Dec. 20, 2010) the NFL and NFL Properties sued Titlecraft, a manufacturer of custom wooden trophies. Titlecraft made wooden replicas of the Vince Lombardi trophy. The Lombardi trophy is a silver statue made by Tiffany & Co. that is awarded to each year’s Super Bowl champion; Titlecraft’s trophies were small wooden replicas that were sold to fantasy football leagues for honoring their own champions.
Finding that (i) the NFL had a valid copyright registration for the Lombardi trophy; (ii) Titlecraft had access to the Lombardi trophy; and (iii) the two trophies were substantially similar, the court granted summary judgment for copyright infringement in favor of the NFL. Although Titlecraft pointed to minor differences in size, angles, and texture, the court stated that “‘if it walks like a duck, quacks like a like and looks like a duck, it has got to be a duck’ – or in this case a copy.”
2. Who dat say dey gonna own dem trademarks?
When the New Orleans Saints reached the Super Bowl in 2010, the NFL sent cease-and-desist letters to several Louisiana merchants, demanding that they stop selling (more…)
A recent case from the Southern District of California highlighted the hurdles that patent licensees often need to overcome when enforcing a patent against third parties.
In EBS Automotive v Illinois Tool Works (S.D. Cal. 1/4/11), plaintiff MOC Products Company asserted that defendant Illinois Tool Works (ITW) infringed a patent to which MOC held an exclusive license. However, the patent was jointly owned by two parties, and MOC received its “exclusive” license from only one of those parties. ITW moved to dismiss MOC’s patent infringement claim, arguing that (more…)
A federal court in Colorado recently addressed this question in the case of Dish Network Corp. v. Arch Specialty Ins. Co. (D. Colo. Aug. 19, 2010). The case arose after Dish Network was sued for patent infringement. Dish Network sought coverage for the litigation from Arch under a commercial general liability (CGL) insurance policy.
Dish argued that the “advertising injury” clause of the CGL policy applied because its allegedly infringing service was an automated phone system that was used for advertising. The court denied Dish Network’s claim, stating that the phone system was not a substantive element of an advertisement, but rather was merely a means of conveying information to customers.
Nonetheless, the court did provide examples in which an accused product could be covered by a CGL policy. My colleagues Russ Barron and Steve Cole recently summarized those examples and provided tips for litigants in an article that is available on the Pepper Hamilton website. For the full article, click here.
As noted in a previous post, it is a common practice for companies to mark a patented product with the applicable patent number. Patent marking provides several benefits, of which the most notable is the ability for the patent holder to collect damages for past infringement.
However, the Patent Act also imposes penalties on those who mark products with false or expired patent numbers. These penalties have spawned a wave of false marking lawsuits by individuals who hope to collect from companies who mark products with incorrect patent numbers or numbers of expired patents.
This week, the Federal Circuit issued an opinion that gives some comfort to patent holders who involve counsel in their marking decisions. In Pequignot v Solo Cup Company (No. 2009-1547, Fed. Cir. June 9, 2010), the Court reminded potential plaintiffs that the false marking statute requires that the marker apply the false patent number ”for the purpose of deceiving the public”. 35 U.S.C. 292(a). In the case, the Court stated: (more…)
When a claim is asserted against a corporate entity, one of the first questions that the company should ask is whether the claim is covered by its insurance policy. When the claim is one for patent infringement, companies typically find a commercial general liability (CGL) policy silent about such claims — and in other cases the policy may expressly exclude the claims.
When the policy is silent, companies may consider whether the claims are covered by any “advertising injury” coverage that may be available under the policy. As my colleagues Russ Barron and Matt Durrell wrote in a recent article:
[W]hether coverage exists for a given patent infringement claim will depend on a number of factors, such as the nature of each claim being asserted by and against the policyholder, the policy language, and court decisions from the relevant jurisdiction. Of these factors, the types of claims being asserted against the policyholder are of particular importance because even if patent claims (or counterclaims) are not covered, the insurer may be required to cover the patent claims if any other claim triggers the insurer’s duty to defend. . . . In most instances, the answer to this question will turn on whether the policyholder can satisfy three elements:
To read the rest of the article, click here.
