Patent Law Practice Center

EDTX Closely Scrutinizes Nuisance Value Settlement Strategy

The following article discussing the increased scrutiny serial patent litigation against large numbers of defendants is receiving in the Eastern District of Texas comes courtesy of our friends at DLA Piper, John Guaragna and Brian Erickson.

A trend is emerging in multi-defendant patent cases in the patent-heavy docket of the Eastern District of Texas – at least in the numerous cases assigned to Judge Leonard Davis in Tyler. Over the past several months, Judge Davis has repeatedly expressed concerns surrounding plaintiffs who assert questionable patents to extract “nuisance value” settlements. In a recent patent case brought by Raylon LLC, Judge Davis summarized his views:

[T]his Court has some concerns about plaintiffs who file cases with extremely weak infringement positions in order to settle for less than the cost of defense and have no intention of taking the case to trial. Such a practice is an abuse of the judicial system and threatens the integrity of and respect for the courts. Often in such cases, a plaintiff asserts an overly inflated damages model, seeking hundreds of millions of dollars, and settles for pennies on the dollar, which is far less than the cost of defense. Where it is clear that a case lacks any credible infringement theory and has been brought only to coerce a nuisance value settlement, Rule 11 sanctions are warranted. (more…)

10 Mistakes That Will Kill Your Patent in Litigation & How To Avoid Them

Selected Aspects Of The Impact Of Patent Application Drafting And Prosecution

Louis S. Sorell, Patent Counsel at Google Inc. in New York City, sent in this article he wrote discussing issues that arise during patent prosectuon which may impact subsequent litigation.  Sorell will be speaking at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on June 17, 2011.  The following is an excerpt from the article:

Introduction

Issues often arise during patent prosecution which impact the course of subsequent patent litigation.  This paper discusses several specific areas in which decisions made during prosecution may particularly impact subsequent litigation.

A.   Background

With respect to the claim language itself, the words of the claims govern and are generally given their ordinary and customary meaning. The focus of this analysis is “what one of ordinary skill in the art at the time of the invention would have understood the term to mean.” (more…)

Divided Infringement: Strategies For Drafting Claims

Dale Lazar, Partner at DLA Piper and Practice Center Contributor , sent in this article discussing divided infringement and how it generally pertains to large systems and corresponding methods.  Lazar will be speaking tat PLI’s Patent Law Insitute this Thursday, February 17th. The following is an excerpt from the aticle.

Divided infringement issues are most likely to arise in the context of large systems and corresponding methods, where multiple parties may contribute to or participate in the system.  A common instance where divided infringement is likely to arise is a network of computers where the functionality of the system is distributed across the computers of the network.  The network employed to connect the computers may be a LAN/WAN and/or the Internet.  Particularly where different computers perform different functions for the overall system, the different computers may be owned or operated by different parties, typically with each party not being controlled by other parties involved with the system.

Included at the end of this paper is a patent application directed to a “Reliance Server for a Transaction System”.  In many ways, the invention is typical of Internet-based inventions – inventions that are implemented over an open communications channel, such as the Internet.  The application has been simplified to focus on only a few of the features of the invention.  Please read the application as a basis for understanding the following remarks concerning divided infringement. (more…)

Article Of Manufacture Claims for Software Inventions: Should They Be Included in Your Patent?

Burt Magen, partner at Vierra Magen Marcus & Deniro LLP and Practice Center Contributor passed along this article he wrote entitled Article of Manufacture Claims for Computer Related Inventions.  According to Magen, article of manufacture claims can offer advantages over apparatus and process claims, including providing an easier mechanism for enforcement of the patent.  With the knowledge provided in his article, Magen says, “patent practitioners can efficiently draft appropriate article of manufacture claims to more effectively protect software inventions.”  Here is the Introduction:

The software industry is growing and becoming more important to the global economy.  As a result, the number of software patent applications has increased dramatically.  To maximize the value of software patents, it is important that the claims of such patents properly protect the invention.  Typically, software patents include apparatus claims, method claims, and/or article of manufacture claims.  Because of the nature of the software industry, for some inventions the article of manufacture claims may be the most important class of claims.  Yet, many software patents do not include article of manufacture claims or include an incomplete set of article of manufacture claims as an afterthought. (more…)