Patent Infringement Actions Research Articles

The Scope of Inventive Step Patent Validity Review andIts Improvement in Patent Infringement Actions- Focusing on Supreme Court Enbanc Decision 2010Da95390 -

The Scope of Inventive Step Patent Validity Review andIts Improvement in Patent Infringement Actions- Focusing on Supreme Court Enbanc Decision 2010Da95390 -

The Scope of Inventive Step Patent Validity Review andIts Improvement in Patent Infringement Actions- Focusing on Supreme Court Enbanc Decision 2010Da95390 -

The Scope of Inventive Step Patent Validity Review andIts Improvement in Patent Infringement Actions- Focusing on Supreme Court Enbanc Decision 2010Da95390 -

The Vonage Trilogy: A Case Study in Patent Bullyingg

This Article presents an in-depth case study of a series of infringement suits filed by “patent bullies.” Unlike the oft-discussed “patent trolls” — which typically sell no products or services and perform no R & D — patent bullies are large, established operating companies that threaten or institute costly patent infringement actions of dubious merit against smaller companies, usually in order to suppress competition or garner licensing fees. In an ideal world of high-quality patents and optimal patent licensing and litigation, infringement suits by aggressive incumbents would have a cleansing, almost Darwinian effect. Yet, defects and distortions in patent examination, licensing, and litigation — the very problems that are raised constantly in the context of patent trolls — generally apply with equal and, often, greater force to patent bullies. Nonetheless, patent bullies have scarcely been discussed in the academic literature or popular press, especially in recent years.More specifically, this Article examines three patent infringement suits filed by incumbent telecommunications carriers — Sprint, Verizon, and AT&T — against Vonage, then an early-stage company providing consumer telephone services over the Internet. Based on a detailed analysis of the patents-at-issue, prior art, court documents, and news accounts, it shows that the incumbents were able to exploit defects in the patent system in order to prevent disruptive technologies from competing with their outmoded products and services. Because startups like Vonage typically lack the resources to vigorously defend against even weak patent suits, patent bullying can result in severe anti-competitive effects. The incumbents in the Vonage suits achieved their intended result — drastically reducing Vonage’s stock price, severely weakening its position in the market, and placing it at the brink of insolvency. This case study demonstrates that further theoretical and empirical study is warranted to assess the full extent of the patent bullying problem.

Sloppy dismissal orders lead to confusion

In May 2004 Mr Garber, while being represented by counsel, filed a patent infringement action against Chicago Mercantile Exchange and the Chicago Board of Trade (collectively, ‘CME’). Six months later, shortly before the Court was scheduled to hold a claim construction hearing on 1 December 2004, Mr Garber’s counsel moved to withdraw from the case. The Court granted counsel’s motion to withdraw, cancelled the 1 December hearing, set a 15 December status conference, and entered an order stating: ‘If plaintiff does not secure counsel by [15 December], this case will be dismissed for want of prosecution’.1 Having failed to obtain new

Injunction must provide explicit notice of conduct prohibited

While district courts have jurisdiction to hold contempt proceedings for actions alleged to violate injunctions issued after a successful patent infringement action based on the filing of an Abbreviated New Drug Application (‘ANDA’), the injunction must provide explicit notice of the conduct prohibited to justify a finding of contempt.

Myriad and the mass media: the covering of a gene patent controversy

PurposeWe explore how the print media in four jurisdictions framed the controversy surrounding Myriad Genetic's BRCA patents and consider the possible influence of media on public perceptions and policy reform. MethodWe used a broad search strategy to collect newspaper articles from Factiva and Lexis/Nexis on Myriad Genetics and the BRCA gene and identified the main triggers for those articles. We then selected articles on the BRCA gene patents for coding. The coding frame queried the presence or absence of either positive or negative statements about gene patenting and a subjective assessment of the tone of the article. We compared the differences in tone and number of positive and negative statements between jurisdictions (Australia, Canada, United Kingdom, and United States). ResultsMyriad Genetic's BRCA1/2 gene patents sparked significant international newspaper coverage in comparison to other stories on gene patenting controversies. Only 55.9% of 143 articles presented a variety of perspectives. The majority of articles (77.6%) had a negative overall tenor; only 6.29% had a positive overall tenor, whereas 16.1% were neutral. There were significant differences in the overall tenor between jurisdictions, with Canadian coverage being overwhelmingly negative in comparison with the other three jurisdictions. The main triggers for news coverage were largely local licensing deals, actions at regional patent offices, and statements and publications by prominent figures. ConclusionMyriad's patents were largely portrayed as a negative story, except in Utah where Myriad Genetics is located, and as an example of the problems associated with gene patents. The story was primarily framed as a social dilemma that needed to be addressed. In Canada there was a disproportionate level of coverage of the political response to the threat of patent infringement action against government testing laboratories and potential impacts on public health care. In Europe and elsewhere in the United States, the opposition to gene patenting at the European Patent Office predominated. In these contexts, our data provide some support that the media coverage helped to drive the policy agenda, although the resultant policy response received almost no media attention.

Making the innocent pay

Even those of us who enter the legal profession for reasons of personal advancement or greed can spot an injustice when we see it. As students and raw recruits to the profession, we share with our clients the notion that, in any cause, one side is ‘right’ and the other ‘wrong’. To allow the party in the wrong to vanquish the party in the right would be unjust, notwithstanding the fact that the law permits it. In time our perspective mellows: we learn to appreciate that in many disputes it is not a question of one outcome being fair, another unfair—it is more a matter of which of two injustices one selects above the other. The recent ruling of the Court of Appeal in Unilin Beheer BV v Berry Floor NV Information Management Consultancy Limited, 25 April 2007 [2007] EWCA Civ 364, is one such case. In brief, following a vigorously contested patent infringement action and a counterclaim for invalidity in the UK, the claimant’s patent was held valid and infringed. The successful patent owner was held to be entitled to damages and to costs, both of which were substantial. Subsequently, in opposition proceedings before the European Patent Office, the claimant’s patent was held to be invalid. One of the questions for the Court of Appeal to resolve was whether the claimant was entitled to receive damages for patent infringement when the patent should never have been granted. Lord Justice Jacob did not shy away from the issue. Now a purist may say: it is a nonsense, and moreover an unjust nonsense, for a man to have to pay for doing what, with hindsight, we know to have been lawful,

Should forum-shopping be a basket case?

Most intellectual property litigants have a tough time. The settlement of any legal dispute consumes hours that can be better used on other things and costs money that is better spent on other things. What’s more, a dark cloud of uncertainty hangs over the disputants’ business plans until it is lifted by the dispute’s resolution. In IP disputes, the situation can be even more fraught: the outcome of a dispute may be the complete exclusion of a party from a market he has worked years to establish, or the sudden and often irrevocable vaporization of an intellectual property right that has encouraged and sustained large-scale investment. For this reason, intellectual property litigants need a dispute resolution environment that enables them to avoid excessive expense and save time and which then lets them get on with their lives. It is no accident that many IP disputes have moved out of the public sector entirely. IP arbitration and mediation have arguably never been more popular, particularly where the disputants have a pre-existing relationship that must outlive the dispute regardless of its outcome. Nor is it any accident that public sector domain name resolution systems such as those operated by WIPO’s Arbitration and Mediation Center and by EurID are so closely modelled in low-cost and relatively informal private sector processes. Even within the formal court and administrative structure of national jurisdictions, IP litigants have a surprisingly large range of options. Depending on the jurisdiction, these include choices between administrative and judicial proceedings, between higher and lower courts and between tribunals the decisions of which may, or may not, be appealed. In the United States an injured rights owner may go to court or seek redress through the International Trade Commission; he may bring patent infringement proceedings in the regular Federal Courts or ride the rocket docket. In Europe there exist different options: pan-European Community trade mark and registered design rights may co-exist with national rights in respect of identical subjectmatter, thus giving their owner the choice between suing for infringement of the Community and domestic versions (he doesn’t get two bites of the cherry, though: Pepsico’s attempt to sue Coca-Cola for infringing its PEPSI Benelux registration with its ipsei product, having failed in an earlier action for infringement of its Community trade mark, was held to be an abuse of process). Given this wide range of choice, together with the European Commission’s almost religious fervour for competition, it seems strange that the European Court of Justice has recently come out so strongly against what it perceives as the evils of forum-shopping by patent litigants, in Case C-539/03 Roche Nederland and others v Primus and Goldenberg. Yet that is what the court views as being the intended function of the Brussels Convention on Jurisdiction and the Enforcement of Judgments. There is another view: the Brussels Convention is intended to lay down rules that regulate, rather than eradicate, the option of an injured party to sue a defendant in the courts of a country other than that in which the latter is domiciled. Prima facie, there would seem to be no better set of facts to justify the exercise of such an option than a patent infringement action brought against nine alleged infringers domiciled in different countries, where the nine are companies within the same group. If the court’s theoretical analysis of the provisions of the Convention leads correctly to the conclusion that a patent owner must commence nine separate patent infringement actions, each in the jurisdiction in which one of the related defendants is domiciled, it is difficult to refute the assertion that the Brussels Convention acts as a deterrent to the enforcement of patent rights against a highly organized international infringer. Indeed, Primus and Goldenberg might be better advised to invest their money in infringing other people’s intellectual property rights in preference to patenting and protecting their own research. The issue of choice of jurisdiction will not go away. The fact that it has arisen so painfully in a Europe so recently determined to fuse itself into a single, internally competitive market is quite ironic. If competition is good for the consumer of electronic goods, telecommunications, banking services, and so forth, it surely should not so suddenly be frowned upon when it comes to the resolution of legal disputes.

Patents holders are not protected from US Government infringement by the Fifth Amendment

In a patent infringement action against the government, the United States Court of Appeals for the Federal Circuit interpreted 28 USC section 1498 as rendering the government liable for the infringement of a method patent only when every step of the claimed method is practised in the United States and further held that a plaintiff cannot allege patent infringement against the government as a Fifth Amendment taking.

Case Report —: BT HYPERLINK PATENT DISPUTE — DID BT INVENT THE HYPERLINK? OBVIOUSLY NOT AS THE US COURTS HAVE SAID SO

On 13 December 2000, British Telecom (BT) filed what must be one of the more unlikely patent infringement actions to have come before the courts recently. As a result of a routine review of its global patent portfolio, BT made the somewhat serendipitous discovery that it owns an old US patent which, according to BT, covers the concept of hyperlinking. The patent was granted in 1989 and is due to run until 2006. Similar patents were filed around the world, but have all now expired. This article explores the passage of the dispute in the US courts and explains how BT’s case came to flounder at the first hurdle.

Harmonizing Prosecution History Estoppel and the Doctrine of Equivalents in Patent Infringement Actions

The patent law's doctrines of prosecution history estoppel and equivalents have come head on in the Court of Appeals for the Federal District's decision Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (Festo). The case, currently before the United States Supreme Court, involves issues relating to the scope of invention that should be afforded to patents in patent infringement actions. This decision threatens to shift dramatically and unjustifiably the balance struck by patent law and practice between patentees and alleged infringers in favor of infringers regarding the interpretation of patents. That is, the Festo decision, by expanding the applicability of prosecution history estoppel in patent infringement actions, substantially curtails a patentee's bases for obtaining a judicial finding of infringement under the doctrine of equivalents. In Festo, the Federal Circuit departed from United States Supreme Court precedent and its own longstanding and well-established practice of using a flexible bar approach to determine whether a patentee was estopped under the doctrine of prosecution history estoppel from asserting infringement under the doctrine of equivalents. The Festo Court adopted a much more stringent complete bar approach to determine whether prosecution history estoppel estops a patentee from asserting equivalents infringement. This complete bar approach limits substantially a patentee's ability to obtain a finding of infringement under the doctrine of equivalents. This article proposes that the Federal Circuit has not justified in abandoning its own precedent and Supreme Court precedent when it discarded the flexible bar approach in favor of the complete bar approach. I propose that Supreme Court and Federal Circuit precedent compel the conclusion that what the Festo Court has denominated as the complete bar approach is just an application of the flexible bar approach to a particular fact pattern. The Festo decision should be reversed by the Supreme Court and the flexible bar approach to prosecution history estoppel should be reinstated. I conclude that the Court of Appeals for the Federal Circuit had little or no basis for abandoning the flexible bar approach in favor of a nonexistent complete bar approach when making prosecution history estoppel determinations. The balance that has existed for many years between prosecution history estoppel and the doctrine of equivalents has served the United States patent system well and should not be altered. The Federal Circuit provided no sensible reason to alter this balance.

The Elusive Logic of Standing Doctrine in Intellectual Property Law

This article provides the first comprehensive analysis of the rules that courts employ to determine who must, may, or may not be a plaintiff in a patent, copyright, or trademark infringement action. Under the patent rules, which date back to the nineteenth century, the patent owner must always be a party to infringement litigation; the exclusive licensee of a patent also may initiate litigation, but only if she joins the owner as a plaintiff; and a nonexclusive licensee lacks standing to participate altogether. As we demonstrate, these simple-sounding rules give rise to some anomalies and are inconsistent, in certain important respects, from the more liberal rules followed in copyright and trademark law. We argue that economic analysis can help to clarify the ways in which infringement threatens (or does not threaten) the interests of the various parties to a transfer agreement (including assignors, assignees, licensors, and exclusive and nonexclusive licensees), and that it provides some plausible reasons for the differences among the rules employed within the three bodies of intellectual property law. More importantly, we argue that, once the relevant interests are better understood, the joinder and intervention provisions of the Federal Rules of Civil Procedure furnish a sufficient framework for determining who should or should not be a party to an infringement action. The need for standing rules that are specific to intellectual property disputes is, in other words, a myth.

Cyberjustice: patent infringement

There are intangible factors that make it difficult to predict the ultimate outcome of any given patent litigation. The key analysis for any infringement action must include an examination of infringement (literal or under the doctrine of equivalents), laches, validity, and damages. The author pinpoints critical tips that may help engineers and corporate management determine the likelihood of success of any given patent infringement action. >

Personal Jurisdiction over Aliens in Patent Infringement Actions: A Uniform Approach toward the Situs of the Tort

Personal Jurisdiction over Aliens in Patent Infringement Actions: A Uniform Approach toward the Situs of the Tort

Federal Procedure: Venue: Application of Special Venue Provision to Change of Venue in Patent Infringement Action

Federal Procedure: Venue: Application of Special Venue Provision to Change of Venue in Patent Infringement Action

Federal Procedure. Venue. Patent Infringement Action May Be Brought in Judicial District Where Defendant Corporation Is Doing Business

Federal Procedure. Venue. Patent Infringement Action May Be Brought in Judicial District Where Defendant Corporation Is Doing Business

Federal Procedure: Proper Venue in Patent Infringement Action against Corporation

Federal Procedure: Proper Venue in Patent Infringement Action against Corporation