Monthly Archives: June 2016

Beware Ye Willful and Wanton Pirates

By Matt Lubozynski

On Monday, the United States Supreme Court, in a unanimous ruling, “eschew[ed] any rigid formula for awarding enhanced damages under § 284,” abandoned the prior “unduly rigid” Seagate test laid out by the Federal Circuit, and instead left the award of enhanced damages simply to the discretion of the district court.  Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513, slip. op. at 12 (June 13, 2016).  This decision should serve to make it much easier, although not automatic, for a patentee to receive enhanced damages after a finding of infringement.

Under 35 U.S.C. § 284, a court “may increase the damages up to three times the amount found or assessed.”  The Federal Circuit, in a prior ruling, had adopted a two-part test to allow for the award of such damages.  This test, known as the Seagate test, required first, proof by “clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.”  Id. at 5 (citation omitted).  The state of mind of the accused infringer was not taken into account at this step, and further, this objective recklessness could not be found if the accused infringer came up with a “substantial question as to the validity or noninfringement of the patent” during the infringement action itself.  Id. (citation and punctuation omitted).  If this objective recklessness were established, then “a patentee must show – again by clear and convincing evidence- that the risk of infringement was either known or so obvious that it should have been known to the accused infringer.”  Id. (citation and punctuation omitted).  If, and only if, both of these are satisfied, could a court then decide whether to actually award enhanced damages.  Id. Continue reading Beware Ye Willful and Wanton Pirates

The Fair Use Doctrine’s Impact on the Future of Software Development

Written by Kate Van Namen, with contribution from Ryan Chambers

softwareIf a software company makes a free tool available online, can competing developers use it without the company’s permission?  According to a California jury, the answer is yes, so long as the developers’ actions constitute fair use under The Copyright Act.

The Copyright Act, 17 U.S.C. §§ 101, et. seq. gives copyright holders exclusive rights to copyrighted material.  However, fair use is a limitation on those rights and can provide a powerful defense to copyright infringement.  Fair use is an exception to the rule that no one may use copyrighted material without permission from the owner, and allows copying for limited purposes such as criticism, comment, news reporting, teaching, scholarship, and research.  If any given use qualifies as fair use, then no infringement has occurred.  There are four factors which must be considered when evaluating whether the use of copyrighted material is fair: (1) the purpose of character of the use, including whether such use is Continue reading The Fair Use Doctrine’s Impact on the Future of Software Development

Venue Stays the Same in Patent Cases

By Matthew M. Lubozynski

iStock_000019576650LargeThe Federal Circuit recently made an important ruling concerning the proper venue for patent infringement suits.  The decision by the Federal Circuit did not change the current interpretation of the venue statutes and companies will continue to be brought into court in such locations as the Eastern District of Texas, despite having minimal contacts with such locations.

In re TC Heartland LLC, — F.3d —, 2016 WL 1709433 (Fed. Cir. Apr. 29, 2016), the Plaintiff, Kraft Foods Group Brands LLC, brought a patent infringement suit against Defendant, TC Heartland LLC (“Heartland”), in the United States District Court for the District of Delaware.  Heartland moved to dismiss the case or transfer venue to the Southern District of Indiana.

In support of its motion, Heartland argued that it is an Indiana limited liability company with its headquarters in Indiana.  Id. at *1.  Heartland further argued that it had a minimal presence in Delaware, including that it was not registered to do business in Delaware, and that only 2% of sales of the Continue reading Venue Stays the Same in Patent Cases