Posts in Litigation

MLC Expands Blanket License Enforcement Campaign With Lawsuit Against Spotify

On May 16, the Mechanical Licensing Collective (MLC), a non-profit entity responsible for administering blanket licenses enacted by the Music Modernization Act (MMA), filed a lawsuit in the Southern District of New York alleging that Swedish streaming media company Spotify has failed to meet its royalty obligations for MMA blanket licenses. The MLC alleges that Spotify’s recent decision to reclassify its Premium subscription service as a bundled subscription offering, leading the streaming company to reduce service revenue reported to the MLC by nearly 50%, is based on a faulty rationale that violates Spotify’s revenue reporting responsibilities for the service.

CAFC Dismisses Bid for PREP Act Protection Due to Lack of Jurisdiction Under Collateral Order Doctrine

The U.S. Court of Appeals for the Federal Circuit on Tuesday, May 14, in a precedential opinion, dismissed an appeal by Puritan Medical Products of a district court denial of its partial motion to dismiss a patent infringement case brought by Copan Italia S.p.A and Copan Diagnostics Inc. The case involved “flocked” swabs “for collecting biological specimens.” The claims cover “a rod [with] a tip covered with fiber with hydrophilic properties” that can absorb biological specimens.  Copan holds several patents on flocked swabs and methods of using them.

Patent Filings Roundup: Samsung Challenges Key Patent Innovations Patent, Theseus LF Asset Holdings Entity Launches New Campaign

It was a slow week for new patent filings at the Patent Trial and Appeal Board (PTAB) and above average week for district courts. This week saw only 15 new filings at the PTAB (one PGR and 14 inter partes reviews (IPRs)). Abbott Diabetes Care, Inc. filed one third of the IPRs at the PTAB, challenging three Dexcom Inc. Patents in five IPRs. Amazon filed two IPRs against one Nokia Technologies OY [associated with Nokia Corporation] patent while Voltage LLC filed two IPRs challenging two Shoals Technologies Group, LLC patents. Pictiva Displays International Ltd. [associated with Key Patent Innovations Limited] had one patent challenged in an IPR by Samsung (discussed below).

Panelists Push for Predictability at IPWatchdog’s 2024 Patent Litigation Masters Program

“Make it happen.” That was the request U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Pauline Newman made of attendees of IPWatchdog’s Patent Litigation Masters 2024 program on Monday, imploring them to “think creatively” to solve the intellectual property problems of today. Pointing to developments such as the Unified Patent Court (UPC), Newman said “it’s a time of change and flux, and we can learn a good deal, not only from the UPC, but the way the law is developing in jurisdictions like Japan and China.”

Chestek Takes Challenge of USPTO Domicile Address Rule for Trademark Applicants to High Court

On May 13, trademark law firm Chestek PLLC filed a petition for writ of certiorari asking the U.S. Supreme Court to take up a challenge to the U.S. Patent and Trademark Office’s (USPTO) promulgation of rules requiring trademark applicants to disclose their domicile address to the agency. According to Chestek’s petition, the Federal Circuit’s lower ruling improperly reads the agency’s notice-and-comment requirement for all general rulemaking out of the relevant statute, here resulting in the unwanted disclosure of sensitive personal information that could put certain trademark applicants at risk of stalking or abuse.

Potential Shifts in Section 337 Precedent: What The Data Tells Us

The U.S. International Trade Commission (the “Commission”) is typically made up of six individual commissioners, but after Commissioner Randolph Stayin’s unexpected return to private practice last year, there are now just four. As a result, upcoming changes to the make-up of the Commission may cause a shift in the Commission’s positions on various legal issues. What happens next is anyone’s guess, but a careful analysis of Commission opinions can help unearth possible future changes in precedent.

CAFC Affirms ITC View on Aggregation of Domestic Industry Costs for Disparate Patents

On May 8, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in Zircon Corp. v. International Trade Commission affirming the U.S. International Trade Commission’s (ITC) ruling that Zircon Corp. had failed to meet the domestic industry requirement to prove a violation of 19 U.S.C. § 1337 due to Stanley Black & Decker’s alleged patent infringement. The Federal Circuit agreed with the ITC that Zircon had failed to provide an adequate basis for evaluating its domestic industry investments by aggregating its investments into products that practiced fewer than all patents asserted by Zircon in the ITC’s Section 337 investigation.

SCOTUS Rejects Three-Year Limit on Copyright Damages But Sidesteps Accrual Question

The U.S. Supreme Court today issued its decision in Warner Chappell Music v. Nealy, a case that asks whether a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit. The Justices ruled 6-3 that “the Copyright Act entitles a copyright owner to recover damages for any timely claim,” with no limit preventing recovery for infringement that happened beyond three years. As to the issue of when a claim for infringement “accrues,” the Court said it “assumes without deciding” that accrual occurs upon discovery of the infringement.

The Case Law on Obviousness-Type Double Patenting: How We Got Here and a Proposal for Change (Part II)

In Part I of this two-part article, we reviewed the origins of the judicially-created doctrine of obviousness-type double patenting (ODP) and laid out the background on how the U.S. Court of Appeals for the Federal Circuit arrived at the 2023 In re Cellect decision. Here, we delve deeper into the case law and explain a simple fix for many present-day ODP problems.

G+ Communications v. Samsung: The Perils of Being ‘Half-Committed’ to FRAND

Earlier this year, a jury trial was held in the matter of G+ Communications, LLC v. Samsung Electronics Co., Samsung Electronics America, Inc., Case No: 2:22-CV-00078-JRG (E.D. Texas). Pursuant to the jury’s verdict, two of the three patents asserted were found to be infringed by Samsung, and compensation was awarded to G+ in the amount of $45 million for one patent and $22.5 million for the other. The verdict further indicated these amounts were running royalties as opposed to lump sum royalties. Additionally, the jury found G+ had not “breached its [fair, reasonable and non-discriminatory] FRAND obligation by failing to offer a license to the Asserted Patents to Samsung that was fair, reasonable, and non-discriminatory, and by failing to act in good faith regarding negotiations with Samsung as to a FRAND license covering the Asserted Patents.”

Outsourcing Patent Enforcement: You May Get What You Pay For

Intellectual property litigation in the 21st century has brought to the fore systems for asserting infringement in which IP owners may be spared some of the huge expense of litigation by “routing” extra-judicial enforcement activities through a third party. They may do so by availing themselves of programs operated by middlemen such as Amazon, which can potentially cripple a competitor with the threat of removal from Amazon.com, while the patentee can claim to be immune from a declaratory judgment suit on the accused infringer’s home turf.

The CRISPR Battle Through the Lens of International Patent Harmonization

On Tuesday, May 7, the U.S. Court of Appeals for the Federal Circuit will hear argument in a long-awaited appeal addressing the inventorship of the Nobel Prize-winning CRISPR technology. The case is the latest in a continuing legal battle between two groups of innovators, each asserting patent rights to key aspects of the groundbreaking technology.

New Data Show There Is a Problem with the U.S. Patent System—But It’s Not Patent Trolls

If the headlines are to be believed, every aspect of American life, from farming to football, is under threat due to excessive patent litigation. While these anecdotes may seem compelling, it is important to look at the underlying data before drawing any conclusions about the state of the U.S. patent system. As an economist and one of the authors of the Federal Trade Commission’s study of patent assertion entities (PAEs), I understand the value data can bring to patent policy debates, and have also seen firsthand the damage evidence-free policymaking has on America’s innovation ecosystem.

The Case for Using Filing Dates Instead of Expiration Dates to Determine Obviousness-Type Double Patenting (Part I)

The judicially-created doctrine of obviousness-type double patenting (ODP) originated long ago as a shield to protect the public against unwarranted patent term extension (PTE). The Uruguay Round Agreements Act of 1994 (URAA) removed most of these concerns when it changed statutory term from 17 years from issue to 20 years from earliest effective filing date. By limiting patent families to a single 20-year term, the URAA eliminated the ability of patent owners to indefinitely extend the term of their invention by filing successive continuations claiming similar subject matter. After the URAA, all patents in a family are effectively limited to the 20-year term of the first-filed patent, plus an occasional modest term extension due to regulatory delays (PTE) or delays at the U.S. Patent and Trademark Office (USPTO) (Patent Term Adjustment (PTA)).

CAFC Reverses Dismissal of Declaratory Judgment Suit Linked to Amazon’s APEX Program

The U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a district court’s decision in Snaprays (dba SnapPower), v. Light Defense Group (LDG) on May 2, finding that Lighting Defense Group (LDG) purposefully directed extra-judicial patent enforcement activities at SnapPower in Utah. The opinion was authored by CAFC Chief Judge Moore.