By Stephen Hall
“Adjudication:” a proceeding which leads to a judicial decision
On November 27, 2017, the Supreme Court heard arguments concerning a challenge to the most frequent form of patent challenges before the United States Patent and Trademark Office (“USPTO”), known as inter partes review (“IPR”). The USPTO is a federal agency empowered by Congress to grant patents and perform other functions related to patents. Its other functions include the authority to review previously granted patents and determine whether they were, in fact, validly granted.
In some cases, the need for review may occur because material not found by the patent examiner would have prevented the patent from being granted in the first place. With all the millions of patents, published applications and journal articles in this country and worldwide, as well as other written publications, industry standards and activities that could affect the right to a patent, there is no system of patent searching guaranteed to uncover every relevant item. Thus, for several decades, Congress has authorized Continue reading IS INTER PARTES REVIEW UNCONSTITUTIONAL?
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
By Matthew M. Lubozynski
The Federal Circuit issued an important en banc ruling in August expanding what can constitute direct infringement of a method claim when one actor does not perform all of the elements of the claim at issue. See Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. Aug. 13, 2015) (“Akamai II”). This concept is referred to as “divided infringement” or “joint infringement.” Previously, if a single actor did not perform all of the steps of the claim, that actor could only be liable for direct infringement if the accused infringer was found to be the “mastermind,” exercising direction and control over the other entities such that the actions could be attributed to it. See Akamai Technologies, Inc. v. Limelight Networks, Inc., 786 F.3d 899, 904 (Fed. Cir. May 13, 2015) (“Akamai I”). “Direction or control” for such a finding was very narrow and the Federal Circuit had stated that this would be satisfied in instances where the “law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party . . . [and] may occur in a principal-agent relationship, a contractual relationship, or in circumstances in which parties work together in a joint enterprise functioning as a form of mutual agency.” Id. at 904-905. This previous standard essentially excluded from infringement any instance where a customer performed any of the steps of a claim in a method patent.
The Supreme Court recognized the narrow scope the Federal Circuit had circumscribed for direct infringement and invited the Federal Circuit to revisit this standard. See Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2120 (2014) (“Our decision on the § 271(b) question necessitates a remand to the Federal Circuit, and on remand, the Federal Circuit will have the opportunity to revisit the § 271(a) question if it so chooses.”). The Federal Circuit took the Continue reading Divided Infringement Broadened
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 Will Gibbons
Could a case on the boxing classic Raging Bull lead to a patent litigation prizefight of sorts? In an en banc hearing ordered on December 30, 2014, the Federal Circuit Court of Appeals, a federal appellate court with special jurisdiction over patents and trademarks, will decide whether the Supreme Court’s essential elimination of a litigation defense involving copyright cases should also apply in patent cases.
The defense in question is the doctrine of laches. Laches is an equitable defense that bars recovery when a party claims it has been legally injured, but unreasonably delays pursuing any legal action in a way that prejudices the opposing party. The defense has been asserted in many kinds of cases, including contract, tort, copyright, and patent cases.
A Supreme Court case involving a copyright and the laches defense, Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), has triggered a ripple effect that may reach into patent law. In that case, Paula Petrella, daughter of the co-author of the screenplay that evolved into Raging Bull, alleged copyright infringement against MGM. MGM countered that Petrella delayed too long in bringing the action, as she had renewed the copyright in 1991 and first threatened suit in 1998. However, the Supreme Court rejected MGM’s position and held that Continue reading Patent Litigation on Reach of Raging Bull Decision to go to Round Two in Federal Circuit