Posts Tagged: "patent infringement"

IP in the Crosshairs: Government Agencies Terminate Relationships with Russian IP Entities as Kremlin Sanctions IP Theft

The United States Patent and Trademark Office (USPTO) announced last week that it will terminate engagement with the Russian IP Office (Rospatent) as well as the Eurasian Patent Organization (EAPO) and the IP Office of Belarus, which has been cooperating with Russia in the lead-up to and during the Russian invasion of Ukraine. The USPTO also said on Wednesday that, effective March 11, it is no longer granting requests to participate in the Global Patent Prosecution Highway (GPPH) at the USPTO when those requests are based on work performed by Rospatent as an Office of Earlier Examination. And, in pending cases where the Office granted special status under the GPPH to applications based on work performed by Rospatent, “the USPTO will remove that status and return those applications to the regular processing and examination queue, meaning that they will no longer be treated as GPPH applications at the USPTO,” said a USPTO statement. “Like so many, we are deeply saddened by the events unfolding in Ukraine,” said the USPTO. “We hope for the restoration of peace and human dignity.”

Senators Take Aim at Chinese Anti-Suit Injunctions with ‘Defending American Courts Act’

A bipartisan group of five U.S. senators have introduced a bill to amend Chapter 28 of Title 35 of the U.S. Code to include language that would “combat corrupt Chinese Courts from issuing ‘anti-suit injunctions,’” according to a joint press release issued by the senators today. Senators Thom Tillis (R-NC), Chris Coons (D-DE), Tom Cotton (R-AR), Mazie Hirono (D-HI), and Rick Scott (R-FL) introduced the bill on March 8. An anti-suit injunction is an injunction issued by a foreign court to limit the rights of parties to pursue litigation in U.S. courts.

I-MAK Defends Integrity of Its Patent Data in Response to Tillis Letter

The Initiative for Medicines, Access & Knowledge (I-MAK) has responded to a letter it received from Senator Thom Tillis (R-NC) in January asking the organization to address claims that its data on the effects of pharmaceutical patents on drug pricing is faulty. In the letter, I-MAK defended its underlying patent data and, in reference to the question of why the data differs significantly from public sources like the Food and Drug Administration’s (FDA’s) Orange Book and court filings, explained that “relying on public sources and court filings is not an accurate methodology for identifying all patents on a drug.” I-MAK’s view is that the U.S. patent system creates patent monopolies that lead to the practice of “evergreening”, in which innovator pharmaceutical companies extend their rights beyond the original patent terms, preventing competition from generics, which in turn causes drug prices to remain high. As part of its mission, I-MAK has developed a database of patents covering key drugs. Its reports are often cited by academics, including in law journals, policymakers and in congressional hearings. As a result, I-MAK has become one of the most authoritative sources for information on patents in this space.

Energy Demand Response Programs and Patent Exposure

The core business model of energy producers and providers does not traditionally create significant patent litigation risk. Despite the complexity of the modern energy grid, the basic business and technology of energy generation has not changed significantly in the past 100 years. However, new programs, including residential demand response, executed via smart home appliances and controls, may expose utility companies to increased liability. Demand response programs allow utility providers to reduce grid load and energy pricing by offering customers pricing incentives to reduce energy usage during times of peak demand…. While such programs have been generally available for commercial customers, recently, demand response opportunities for residential customers have been expanding. Where these residential demand response programs allow energy providers to directly control, through the internet, consumers’ smart thermostats and appliances, energy providers may be exposed to patent liability.

Federal Circuit Upholds $6 Million ITC Civil Penalty After Subsequent Invalidation of Claims

On March 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. International Trade Commission (ITC)’s determination that the civil penalty imposed on DBN Holding, Inc. and BDN LLC did not require modification or rescission following the subsequent invalidation of the asserted claims. The ITC imposed this civil penalty against DBN for violating a consent order that prohibited unfair trade acts of infringement involving the now invalidated claims.

Fifth Circuit Says Auto Parts Suppliers Have No Article III Standing to Bring Antitrust Claims Against SEP Holders

The U.S. Court of Appeals for the Fifth Circuit on Monday vacated and remanded a district court decision that had dismissed Continental Automotive Systems, Inc.’s suit against several standard-essential patent holders and their licensing agent, claiming violations of federal antitrust law and state law. The U.S. District Court for the Northern District of Texas dismissed with prejudice Continental’s Sherman Act claims for lack of antitrust standing and, alternatively, for failure to plausibly plead certain elements. Continental appealed, but the Fifth Circuit said Continental’s claims should have been dismissed for lack of Article III standing because it had not proven that the SEP holders had “denied Continental property to which it was entitled and that Continental thereby suffered a cognizable injury in fact.”

Big Tech and China, Inc. Rejoice in DOJ Draft SEP Policy Statement and FTC Speech

Last summer, I lamented how the Department of Justice – Antitrust Division (DOJ), without Senate confirmed leadership, was hastily pushing through policies that augmented the already-enormous power of Big Tech and benefitted China’s interests. Similarly, I uncovered how the App Association, a Big Tech-funded advocacy organization masquerading as a group of small app developers, was able to trick the Federal Trade Commission (FTC) into inviting it to speak at its July 2021 Commission meeting alongside legitimate small businesses. This is the same association that supported Apple in its litigation against (real) app developers, issued a June 2021 press release against the House bills aimed at regulating Big Tech, and misses no opportunity to support Big Tech interests.

Word Salad, Fact Confusion, and Lawyering: One Take on ParkerVision v. Qualcomm

Last month, I followed a hearing in a case called ParkerVision v. Qualcomm in Federal Court in the Middle District of Florida and reviewed the court briefs. This patent infringement case is potentially one of the largest of the year and is related to very important technology that miniaturized radio frequency (RF) transceivers, thus paving the way for the invention of the smartphone. Lawyer arguments in these hearings are very interesting, and you can learn a lot about the law. You can also learn how lawyers distort and twist the facts by confusing the court with word games, something I call word salad. Courts are pretty good at figuring out word games in most subject matter, but technology is foreign territory to many courts, so a well-tossed word salad can bring about an unjust decision.

General Counsels Ask Raimondo to Immediately Repeal NHK-Fintiv Framework

Invoking familiar warnings about grave threats to U.S. innovation, 23 chief legal officers of big companies spanning industries from high-tech, internet and streaming to auto, financial services and home security, recently sent a letter to Secretary of Commerce Gina Raimondo calling on her to “immediately repeal the NHK-Fintiv rule” established by former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu via precedential Patent Trial and Appeal Board (PTAB) decisions. According to the letter, NHK-Fintiv practice has written vital protections intended by the America Invents Act out of the law without public notice or comment, and “has caused—and continues to cause—immediate and irreparable harm to American innovators and manufacturers.”

The Anti-suit Injunction Conundrum: How We Got Here and How to Avoid It

An anti-suit injunction is an interim order issued by a court in one jurisdiction that prohibits a litigant from initiating or continuing parallel litigation in another jurisdiction. The practice of the anti-suit injunction is traced back to fifteenth century England, where royal courts issued writs of prohibition to stay parallel proceedings in the ecclesiastical courts or common law courts. Initially, the use of anti-suit injunctions was limited in England. By the nineteenth century, however, their use expanded to prevent litigation in other British colonies and eventually foreign countries.

CAFC Corrects District Court’s On-Sale Bar Analysis

The U.S. Court of Appeals for the Federal Circuit (CAFC) today reversed the U.S. District Court for the District of Pennsylvania’s summary judgment that a medical device design patent was not invalid under the on-sale bar. Junker v. Medical Components, Inc. The district court found the patent was infringed and awarded damages in the amount of $1,247,910. But the CAFC held that a letter sent by the inventor’s business partner to Boston Scientific Corporation in 1999 represented a commercial offer for sale of the claimed design.

Electronic Frontier Foundation’s Attempt to Unseal Uniloc Licenses Falls Flat at CAFC

In its second appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) regarding the sealing of documents in several related cases against Apple, Uniloc scored a win when the CAFC said today that the United States District Court for the Northern District of California failed to comply with its original remand instructions, constituting an abuse of discretion. The appellate court for a second time ordered the district court “to make particularized determinations as to whether the third-party licensing information sought to be sealed should be made public.”

Wading into Contract Law Again, CAFC Says Forum Selection Clause Also Precludes IPRs

The U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today issued a precedential decision holding that the U.S. District Court for the District of Delaware improperly denied Nippon Shinyaku Co., Ltd.’s motion for a preliminary injunction in the court’s misreading of the plain language of a contract’s forum selection clause. The CAFC consequently reversed the decision and remanded for entry of a preliminary injunction (PI) enjoining Sarepta Therapeutics, Inc. from proceeding with its seven inter partes review petitions (IPRs) against Nippon Shinyaku and requiring that Sarepta withdraw the petitions.

CAFC Rejects Apple’s Claim Construction and Partially Affirms Infringement of Wi-LAN Patents, But Orders New Damages Trial

On February 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed in part, reversed in part, vacated in part, and remanded a patent infringement decision of the U.S. District Court for the Southern District of California that had awarded WiLAN, Inc. $85.23 million in damages from Apple Inc. Wi-LAN is the owner of two patents related to allocating bandwidth in a wireless communication system, U.S. Patent Nos. 8,457,145 (the ‘145 patent) and 8,537,757 (the ‘757 patent). In May 2014, Apple sued Wi-LAN in the Southern District of California seeking a declaratory judgment of non-infringement and invalidity for all claims of the ‘757 and ‘145 patents. Wi-LAN counterclaimed, asserting that certain Apple devices, including certain iPhone 5 and 6 models infringed claim 1 of the ‘757 patent and claims 9, 26, and 27 of the ‘145 patent based on their use of its Long-Term Evolution (LTE) wireless communication standard. Wi-LAN argued that the technology in the two patents at issue enabled Voice over Loong-Term Evolution (VoLTE), which enables voice call service over a 4G LTE network.

CAFC Orders New Trial on Damages, Clarifies IPR Estoppel Rule in Appeal of Caltech’s $1.1 Billion Win Against Apple and Broadcom

On February 4, in a mixed precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California in a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc. The suit was related to Caltech’s U.S. Patent 7,116,710 (‘710 patent), U.S. Patent 7,421,032 (‘032 patent), and U.S. Patent 7,916,781 (‘781 patent). The CAFC affirmed the district court’s denial of judgment as a matter of law (JMOL) on infringement because the jury’s verdict of infringement of the declared claims of the ‘710 and ‘032 patents was supported by substantial evidence and the district court’s construction of the claim limitation “repeat” was not erroneous.