Last week, the Federal Circuit Court of Appeals decided a case that sheds further light on a relatively new phenomenon associated with the term “reverse patent troll.” (Phigenix, Inc. v. ImmunoGen, Inc., January 9, 2017.) The notion of “abusive patent litigation” in the language of the Patent Office has existed for more than a decade. Often, the perpetrators are shell companies who sue or threaten legal action against others and who enjoy relative impunity, as it is difficult to recover fees or assert counterclaims against them. In the traditional sense, an abusive patent litigant is a company that obtains patents – even weak ones that never should have been granted over prior art in the first place – and uses them to extract settlements from companies that sell a product or provide a service. In this newest iteration, however, the victim is the one who owns a patent. The “play” here is that the aggressor will challenge the company’s patent if its demands are not met.
In the case last week, the patent owner was ImmunoGen, Inc. It licensed its patent over a cancer-fighting antibody to Genentech. The challenger was Phigenix, Inc., the new owner of a patent it had acquired only recently, which it claimed overlapped with the ImmunoGen patent. Phigenix threatened to challenge the ImmunoGen patent unless an agreement to license its newly acquired patent was Continue reading Abusive Patent Litigants Find a New Angle
Wyatt, Tarrant & Combs, LLP is pleased to announce that Stephen C. Hall has been appointed as Vice Chair of the Patent Litigation Subcommittee of the Defense Research Institute’s Intellectual Property Litigation Section. The Intellectual Property Litigation Section is dedicated to meeting member needs relating to substantive law issues in patent, trademark, copyright and trade secret litigation as well as professional and business development. The Section particularly focuses on issues related to IP litigation and provides the defense practitioner with the skills and tools needed to thrive in this competitive market. The Defense Research Institute (DRI) is the leading organization of defense attorneys and in-house counsel in the nation and has served the defense bar for more than 50 years.
Mr. Hall concentrates his practice in the areas of patents and litigation involving medical technology, life sciences, and chemical products and inventions. He is a registered patent attorney who practices before the United States Patent and Trademark Office and in federal and state courts. He is a former President of Kentucky Defense Counsel and former Vice Chair of the Biotechnology Law Committee of the American Bar Association. Mr. Hall is AV rated in Martindale-Hubbell and has been recognized in Woodward/White’s The Best Lawyers in America for Biotechnology, and Kentucky Super Lawyers and Chambers and Partners USA in the area of Intellectual Property. He has also been recognized as one of the top lawyers in the area of Patent Law by Louisville Magazine. Mr. Hall earned his undergraduate degree from the University of Louisville, magna cum laude, and his law degree from the University of Cincinnati College of Law.
By Matthew M. Lubozynski and Amanda Warford Edge
Just over a year ago, on April 29, 2014, the U.S. Supreme Court issued two landmark patent opinions—Octane Fitness, LLC v. Icon Health & Fitness, Inc.1 and Highmark Inc. v. Allcare Health Mgmt. System, Inc.2 Both cases dealt with the Federal Circuit’s application of 35 U.S.C. § 285, which permits courts to award attorney’s fees to the prevailing party in “exceptional” patent cases. Prior to these decisions, the Federal Circuit made “exceptional case” determinations under a fairly specific standard, finding an “exceptional case” only if it involved “material inappropriate conduct” or was both “objectively baseless” and “brought in subjective bad faith.” Further, to establish the “exceptional” nature of the case, the parties were required to produce clear and convincing evidence—and the Federal Circuit reviewed a lower court’s award of attorney’s fees de novo. In Octane Fitness and Highmark, however, the Supreme Court drastically changed these standards. As a result of these changes, many believed that a grant of attorneys’ fees under 35 U.S.C. § 285 would be much easier to attain.
As an initial matter, in Octane Fitness, the Court rejected the Federal Circuit’s “overly rigid” formula for exceptionality findings. According to the Court, the formula “superimposes an inflexible framework onto statutory text that is inherently flexible.” The Court instead held that Continue reading A Year in Review: The Impact of Octane Fitness and Highmark on Attorney’s Fee Awards in Patent Cases
By Matt Lubozynski
Last week, the United States Supreme Court issued an important ruling in Commil USA, LLC v. Cisco Systems, Inc., concerning defenses available to a defendant accused of inducing infringement of a patent. Generally, under 35 U.S.C. § 271, there are 3 ways one can be found liable for patent infringement. First, one can be found to directly infringe a patent, which many may be surprised to find is a strict liability offense, requiring no intent to infringe and no knowledge of the patent prior to suit being brought on the part of the accused infringer. One can also be found liable for indirect infringement of a patent, either through inducing infringement or contributory infringement of the patent. Both of these, contrary to direct infringement, require actual knowledge of the patent-in-suit and knowledge of infringement. Thus, as the Supreme Court emphasized, one can defeat a claim of inducement or contributory infringement by showing it did not know its acts were infringing the patent-in-suit.
The question presented to the United States Supreme Court in Commil was whether a belief that the patent-in-suit was invalid, versus not infringed, was a defense to a claim of inducement. The Federal Circuit Court of Appeals had previously held Continue reading United States Supreme Court Finds Belief in Invalidity Not a Defense to Inducement Claim
By Stephen C. Hall
How would the dynamic of patent infringement litigation change if Patent Assertion Entities, who file lawsuits serially, faced a higher level of scrutiny over their pre-lawsuit investigation? This post explains how to accomplish this with due regard for attorney-client privilege and attorney work product.
In its study of the Patent Assertion Entity (“PAE”), the Federal Trade Commission defined PAEs as firms that acquire patents to generate revenue through litigation. Like any patent holder, a PAE must reasonably investigate before filing a lawsuit. However, a serial PAE might sue dozens or hundreds of players in an industry with a cookie-cutter complaint, and some attempt to exploit the fact that Continue reading The “Patent Assertion Escrow” as a Limit against Abusive, Coercive Litigation