LexisNexis® Legal Newsroom
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...

Troutman Sanders Federal Circuit Review: Negotiations Within the U.S. for Sales Outside the U.S. Do Not Constitute Direct Infringement

Halo Electronics, Inc. v. Pulse Electronics, Inc. and Pulse Electronics Corp. , No. 2013-1472, (Fed. Cir. Oct. 22, 2014) (Lourie, CJ.) [ an enhanced version of this opinion is available to lexis.com subscribers ]. Halo sued Pulse for infringing Halo’s U.S. Patent Nos. 5,656,985, 6,297,720, and...

Lost Profits Cannot Be Recovered for Use of an Infringing Article Abroad

United States patent law contains a presumption against “extraterritoriality,” which means that patents generally do not cover activity that occurs outside of the U.S. Congress has provided some exceptions. For example, 35 U.S.C. § 271(f) creates infringement liability for the exportation...

S.D.N.Y. Invalidates Patent Claims for Crowd-Funding as Too Abstract

by Lewis V. Popovski , Abhishek Bapna , and Vivian Cheng District Judge Katherine Polk Failla granted declaratory judgment plaintiff Kickstarter, Inc.’s motion for summary judgment that U.S. Patent No. 7,885,887 (“the ’887 patent”) is invalid under 35 U.S.C. § 101. The...

Denial of Injunction in Apple, Samsung Case Vacated by Federal Circuit

WASHINGTON, D.C. — (Mealey’s) A California federal judge’s decision to deny Apple Inc. a permanent injunction in high-stakes smart phone patent litigation was vacated and remanded today by a divided Federal Circuit U.S. Court of Appeals ( Apple Inc. v. Samsung Electronics Company Ltd...

Federal Circuit Upholds Expert Apportionment Methodology to Prove Reasonable Royalty Damages for Individual Features of Complex Technology

by Steven C. Schroer and Christian C. Damon On September 21, 2015, in Summit 6, LLC v. Samsung Electronics Company, Ltd. , the Court of Appeals for the Federal Circuit added a new chapter to rapidly developing jurisprudence addressing the kinds of evidence admissible to prove the reasonable royalty...

U.S. Supreme Court Agrees to Hear Challenge to Willful Infringement Standard

Today the U.S Supreme Court granted a writ of certiorari in two patent cases, agreeing to consider challenges to the current standard for finding willful infringement, which allows the judge to increase a patent damage award by up to three times. The cases are Halo Electronics Inc. v. Pulse Electronics...