All posts by WyattLLP

Mark Vorder-Bruegge Admitted to American College of Trial Lawyers

Mark Vorder-BrueggeMark Vorder-Bruegge, Jr. has become a Fellow of the American College of Trial Lawyers, one of the premier legal associations in North America.

The induction ceremony at which Mr. Vorder-Bruegge became a Fellow took place recently before an audience of approximately 600 persons during the recent 2017 Spring Meeting of the College in Boca Raton, Florida.

Founded in 1950, the College is composed of the best of the trial bar from the United States and Canada. Fellowship in the College is extended by invitation only and only after careful investigation, to those experienced trial lawyers of diverse backgrounds, who have mastered the art of advocacy and whose professional careers have been marked by the highest standards of ethical conduct, professionalism, civility and collegiality. Lawyers must have a minimum of fifteen years trial experience before they can be considered for Fellowship.

Continue reading Mark Vorder-Bruegge Admitted to American College of Trial Lawyers

Supreme Court Narrows Infringement for Sending Component(s) Abroad – But Only by a Little Bit

By Steve Hall

Last week, in a near-unanimous opinion rendered without dissent, the Supreme Court emphasized quantity over quality, holding that it is not an infringement under the Patent Act to supply a single component of a multi-component product being manufactured abroad.  Life Technologies Corp. v. Promega Corp., No. 14-1538, — S.Ct. –, 2017 WL 685531 (Feb. 22, 2017).  The particular section of the Act before the Supreme Court was 35 U.S.C. §271(f)(1), which makes it possible for infringement to arise from “[supplying] or [causing] to be supplied in or from the United States all or a substantial portion of the components of a patented invention.”  The purpose of the statute is to prevent a domestic manufacturer from making all, or substantially all, components for an infringing product in the U.S., while shipping the components overseas for assembly.  Id.  The combining of components overseas must be performed “in a manner that would infringe the patent if such combination occurred within the United States.”  35 U.S.C. §271(f)(1).

In terms of the discrete issue before it, the Supreme Court held that “when a product is made abroad and all components but a single commodity article are supplied from abroad, the activity” does not infringe.  Life Technologies Corp., at *8.  The product at issue was a Continue reading Supreme Court Narrows Infringement for Sending Component(s) Abroad – But Only by a Little Bit

The Impact of President Trump’s IP-Related Appointments

By Steve Hall and Kate Van Namen

sclaes with copyspace showing law justice or court concept

Having been sworn in as the Forty-Fifth president of the United States, Donald Trump will now appoint individuals who will leave their fingerprints on the intellectual property landscape.  Although it might not happen overnight, at some point in 2017 the President is expected to appoint a Director of the United States Patent and Trademark Office, and a new Supreme Court justice to fill the seat of Justice Antonin Scalia.  These are at least two of the significant appointments by President Trump related to intellectual property.

The USPTO Director sets the tone for hiring and promoting administrative judges, examiners, and supervisors – individuals who, collectively, exercise great power with respect to the protection and enforcement of intellectual property rights.  Also, the Director serves as the principal advisor to the President on domestic and international intellectual property policy matters.

Undoubtedly, the criteria for USPTO Director candidates will revolve around jobs.  The President has expressed the need for strengthening U.S. patents worldwide and preventing misappropriation of intellectual property as substantial factors in protecting jobs in this country.  Candidates who do not go to sleep at night thinking about Continue reading The Impact of President Trump’s IP-Related Appointments

Supreme Court Broadens “Article of Manufacture” for Design Patent Infringement, Declines to Do Anything Else

By Matt Lubozynski

iStock_000019576650LargeYesterday, in a unanimous opinion, the United States Supreme Court broadened what can be considered an “article of manufacture” for design patent infringement.  See Samsung Electronics Co. v. Apple Inc., No. 15-777, — S. Ct. —, 2016 WL 7078449 (Dec. 7, 2016).  “Patent protection is available for a ‘new, original and ornamental design for an article of manufacture.’”  Id. at *2 (quoting 35 U.S.C. §171(a)).  This is often referred to as a design patent.  A design patent is “infringed if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same.”  Id. (citation and quotation omitted).  Damages for design patent infringement are permitted under 35 U.S.C. § 289.  §289 states that an infringer “shall be liable to the owner to the extent of his total profit, but not less than $250[.]”  35 U.S.C. § 289.  The Supreme Court provided a two-part test for “[a]rriving at a damages award under §289[.]”  Id. at *4.  “First, identify the ‘article of manufacture’ to which the infringed design has been applied.  Second, calculate the infringer’s total profit made on that article of manufacture.”  Id.

In the current case, Apple sued Samsung in 2011 for infringing three of its design patents relating to its iPhone.  Id. at *4.  The design patents at issue covered a black rectangular front face with rounded corners, a rectangular front face with Continue reading Supreme Court Broadens “Article of Manufacture” for Design Patent Infringement, Declines to Do Anything Else

Matt Lubozynski authors article for the Memphis Daily News on recent patent-infringement lawsuit ruling

MattLubozynski_HeadshotMatt Lubozynski, member of Wyatt’s Intellectual Property Protection & Litigation Service Team, wrote an article that was recently published in the Memphis Daily News.  The article, “Patent-holders Feel More Secure Thanks to Patent-Infringement Lawsuit Ruling,” discusses how the Supreme Court’s decision in Halo Electronics, Inc. v. Pulse Electronics, Inc. has helped ease the rigid standards required to collect enhanced damages against a patent infringer.

Please click here to read the full article.

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

Steve Hall and Matt Williams quoted in Louisville Business First on the current state of Intellectual Property Law

Steve Hall and Matt Williams, members of Wyatt’s Intellectual Property Protection & Litigation Service Team, were quoted in Louisville Business First.  The article, “Intellectual Property Law Has a Real-World Impact on Businesses,” describes changes in Intellectual Property Law and their effect on companies and individuals alike.

Please click here to read the full article.

The Defend Trade Secrets Act: What Employers Need to Know

By Kacey L. Faughnan, Byron N. Brown, IV, and Sean G. Williamson

IP out the door 4930034SmallBusinesses now have an additional weapon with which to protect their trade secrets.  Effective May 11, 2016, the Defend Trade Secrets Act (“DTSA”) was signed into law.  The DTSA provides a federal cause of action for the protection of trade secrets related to products or services used, or intended for use, in interstate or foreign commerce.  Traditionally, trade secrets have not enjoyed the same protections under federal law as other forms of intellectual property, like patents, trademarks, and copyrights.  Instead, owners of trade secrets had to rely upon a patchwork of state laws and various adoptions of the Uniform Trade Secrets Act to safeguard their innovations.  The DTSA only broadens trade secret protection, leaving intact the parallel remedies available under state law.  Yet, the implementation of the DTSA will help to alleviate the uncertainty and inconsistent results that previously occurred in some cases as a result of state-by-state variations in trade secret law.

The enactment of the DTSA provides increased forum choices for businesses taking legal action to protect trade secrets.  Prior to the DTSA, federal courts were only available as a forum in limited cases.  The new law also increases the amount of Continue reading The Defend Trade Secrets Act: What Employers Need to Know