Reed Smith on Tenth Circuit Finds Duty to Defend Patent Infringement Allegations

In this Analysis, Timothy P. Law and Jeremy F. Heinnickel discuss the Tenth Circuit's decision in Dish Network Corp. v. Arch Specialty Ins. Co. , 2011 U.S. App. LEXIS 20955 (10th Cir. Colo. Oct. 17, 2011) [ enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE...

Sunstein, Kann, Murphy, & Timbers: New Encouragement for Patent Owners Seeking Injunctions After Winning an Infringement Suit

By Meredith L. Ainbinder, a member of Sunstein's Litigation Practice Group Uncertainty continues to linger around a patent owner's ability to obtain a permanent injunction after succeeding in proving infringement at trial. While a monetary award compensates the patent owner for the defendant's...

Troutman Sanders: Judge Jackson Enjoins Verzion FIOS’ Video on Demand Service but Grants Six Month Sunset Provision

By Dabney Carr As we posted here and here , ActiveVideo Networks won a jury verdict that the Verizon FiOS Video on Demand ("VOD") Service infringes two of its patents. On November 23, Judge Raymond Jackson granted ActiveVideo's motion for a permanent injunction of the FiOS VOD service...

Defenses to Patent Infringement Under the America Invents Act

By Daniel H. Sherr Excerpt: History Prior to the AIA, in 1999 the American Inventors Protection Act re-established prior user rights (under certain conditions), but limited only to business method technologies. Prior User Rights provisions in the 1999 Patent Act were primarily in response to the...

Troutman Sanders LLP: Court Awards Summary Judgment of Non-Infringement but Dismisses Counterclaims for Tortious Interference and False Advertising

By Dabney Carr In a two-part decision in Heflin v. Coleman Music, Judge Doumar of the Eastern District of Virginia granted summary judgment of non-infringement to Coleman but dismissed Coleman's counterclaims of tortious interference and false advertising that were based on notices of potential...

Sunstein, Kann, Murphy, & Timbers: Court Raises the Heat on Patentee Who Persisted with Baseless Infringement Suit

By Samuel J. Petuchowski , a member of our Patent Practice Group Much patent discourse during the last decade has been driven by the perceived vulnerability of manufacturers to patent assertion by so-called "non-practicing entities," known as NPEs (or less charitable epithets), who...

Patents Post-Grant: Republican Presidential Candidates Accused of Patent Infringement

Romney, Gingrich and Santorum Named as Defendants in Patent Suit This past Monday, EveryMD filed suit against the Republican presidential candidates for...well..using Facebook. The suit, captioned EveryMD v. Rick Santorum, Mitt Romney, and Newt Gingrich (C.D.CA) explains that U.S. Patent 7,644,122...

Prosecuting Patent Applications in District Court after Kappos v. Hyatt

Under the Supreme Court's decision in Kappos v. Hyatt [ enhanced version available to lexis.com subscribers ] patent applicants that pursued their claims through a de novo civil action in district court, rather than through review at the Federal Circuit, are free to submit new evidence to support...

Troutman Sanders LLP: Patent Infringement Claims are Subject to Arbitration, But District Court Orders Stay Rather than Dismissal Pending Arbitration

By Megan Rahman , In a July 13 decision found here , Judge Jackson stayed, rather than dismiss, the case pending arbitration and ruled that the court could determine the issues of arbitrability, which would, in this case, include the patent infringement claims. Bayer CropScience AG, et al. v. Dow...

Supreme Court To Decide Federal Jurisdiction In Patent Malpractice Cases

WASHINGTON, D.C. - (Mealey's) The question of the best forum - state or federal court - for legal malpractice claims stemming from underlying patent litigation will be addressed by the U.S. Supreme Court, which granted certiorari on Oct. 5 ( Jerry W. Gunn v. Vernon F. Minton , No. 11-1118, U.S. Sup...

Induced Infringement Does Not Require a Direct Infringer

By Eric R. Chad * In a per curiam opinion, Akamai Techs., Inc. v. Limelight Networks, Inc. , 692 F.3d 1301 (Fed. Cir. 2012) [ enhanced version available to lexis.com subscribers ], a narrow majority of the Court of Appeals for the Federal Circuit, sitting en banc, revisited the Federal Circuit's...

Federal Judge Upholds $368 Million Patent Infringement Verdict Against Apple, Inc.

On Tuesday, Feb. 26, 2013, Texas Federal District Judge Leonard Davis denied Apple, Inc.'s motion for post-trial relief from a substantial verdict that had been awarded to plaintiff VirnetX in November of 2012 ( VirnetX, Inc. v. Cisco Systems, Inc., et al. , No. 6:12-cv-00855-LED; 6:10-cv-00417-LED...

Fitch, Even, Tabin & Flannery IP Alert: Federal Circuit Rejects “Marking Estoppel” Doctrine

The Court of Appeals for the Federal Circuit issued a recent decision rejecting the doctrine of "marking estoppel." The decision, Frolow v. Wilson Sporting Goods Co . [ an enhanced version of this opinion is available to lexis.com subscribers ], clarifies certain issues under the law of...

Citing Pastry Precedents, Court Rules Agilight Does Not Infringe GE LED Patents

A previous post reported on GE's patent infringement suit against AgiLight asserting several patents relating to LED string light engine structures and assembly methods. In a recent decision the U.S. District Court for the Northern District of Ohio granted AgiLight's motion for summary...

Federal Circuit Finds Patent Marking is Circumstantial Evidence of Infringement

In Frolow v. Wilson Sporting Goods Co. [ an enhanced version of this opinion is available to lexis.com subscribers ], the Federal Circuit refused to adopt the doctrine of marking estoppel, but held that evidence that Wilson had marked some accused tennis racket models constituted evidence of infringement...

Yet Another Bill Proposes Heightened Pleading Standard for Patent Cases

Multitude of Anti Patent Troll Bills Before Congress Yet another patent reform bill, H.R. 2639 , was introduced last week by Rep. Hakeem Jeffries (D-NY). Like many of the bills introduced over the past few months , H.R. 2639 seeks to mandate more particuarity for pleading patent infringment, and seeks...

Motorola Escapes Microsoft by Ducking Under ITC Domestic Industry Requirement

In Microsoft Corp. v. International Trade Commission [ an enhanced version of this opinion is available to lexis.com subscribers ], the Federal Circuit upheld the ITC’s determination that Microsoft had failed to establish that there was a “domestic industry” relating to three of four...

Burden of Proof for Patent Licensees Debated at Supreme Court

WASHINGTON, D.C. — (Mealey’s) To uphold findings by the Federal Circuit U.S. Court of Appeals that a patent licensee bears the burden of proving noninfringement “would impair the purpose and utility of the Declaratory Judgment Act,” an attorney for petitioner Medtronic Inc. told...

There Was a Simpler Way to Decide Fresenius v. Baxter!

by Charles L. Gholz and W. Todd Baker Excerpt: In Fresenius USA, Inc. v. Baxter International, Inc. , 721 F.3d 1330, 107 USPQ2d 1365 (Fed. Cir. 2013) ( opinion for the court by Circuit Judge Dyk, joined by Circuit Judge Prost; dissenting opinion by Circuit Judge Newman), the majority held (1) that...

Supreme Court Reverses Federal Circuit in Patent Licensee Case

WASHINGTON, D.C. — (Mealey’s) A Federal Circuit U.S. Court of Appeals holding that a patent licensee bears the burden of proving noninfringement under the Declaratory Judgment Act was reversed by a unanimous Supreme Court today ( Medtronic Inc. v. Mirowski Family Ventures LLC et al. , No...

Beware: Indemnification May Create Privity Under IPR Statutes

Indemnification Obligation May Trigger IPR Clock Indemnification from a claim of patent infringement is a common warranty in contractual agreements for the exchange of technological goods. In the event of an infringement claim against the contracted goods/services, a demand for indemnity triggers...

Fitch Even IP Alert: Supreme Court Places Burden of Proof on Patentee in Declaratory Judgment Actions

by Brett J. Smith A patentee who brings a patent infringement lawsuit bears the burden of proving infringement by a preponderance of the evidence. Many patent infringement cases arise in the context of a declaratory judgment action, where an accused infringer brings suit and asks the court to declare...

Apportionment of Reasonable Royalties for Patent Infringement

Excerpt: By 1866, the Supreme Court had established both that a patentee has the burden of apportionment when seeking damages for infringement and that a reasonable royalty was an available form of damages for patent infringement. However, it was not until 2011 that courts began to expressly explore...

LaFrance on Placing the Burden of Proof Where it Belongs in a Patent Licensee's Action for Declaratory Judgment of Non-Infringement: Medtronic, Inc. v. Mirowski Family Ventures

Excerpt: In an action for patent infringement, it is well settled that the patentee bears the burden of proving infringement. In Medtronic, Inc. v. Mirowski Family Ventures, LLC, 2014 U.S. Lexis 788 (Jan. 22, 2014), the Supreme Court unanimously held that the patentee also bears this burden when it...

Case Summary: Microsoft Corp. v. Datatern, Inc.

by Jeffrey S. Ginsberg , Mathew G. Berkowitz , and Jeremy S. Boczko Short Summary: Subject matter jurisdiction for a declaratory judgment action must be determined on a product-by-product basis. Case: Microsoft Corp. v. Datatern, Inc. , No. 2013-1184 (Fed. Cir. Apr. 4, 2014) (precedential) [ an...