Patent Law Practice Center

Infringers may soon pay a heavy price in China

Chinese President Xi Jinping recently made some unusually strong comments regarding intellectual property. “Wrongdoing should be punished more severely so that IP infringers will pay a heavy price,” Xi said.

According to IAM, the comments from President Xi are the most extensive he’s made in public on the subject of intellectual property protection. He called on national authorities to advance IP regulations, improve the quality and efficiency of examinations and to accelerate the building of IP institutions. The remarks are a major acknowledgement of the importance of strong IP protections to a nation’s economy, directly from the head of state of one of the world’s major economies.

Political leaders in Washington, DC should take notice of Xi’s comments. In China, where there is single-party rule, change can happen dramatically, as we have already seen on the patent and innovation landscape. With the support of President Xi, China could very quickly move to become the preferred jurisdiction for innovators, given the market size afforded by a country with 1.4 billion people. If acted upon in a serious way, this new Chinese approach to dealing with infringers could send a shockwave through the entire intellectual property community, if not the entire world economy.

“President Xi’s statement on the importance of IP enforcement indicates China’s growing status as a leader in innovation,” said Erick Robinson, a U.S. patent attorney based in Beijing. He is Director of Patent Litigation at Beijing East IP. “China knows that only by protecting patent rights will individuals and companies have incentive to create new technical solutions.”

At a time when President Xi is actively moving China’s IP policy to a place where infringers are met with harsher penalties, some Congressional leaders support legislation that continue attempts to further gut the U.S. patent system, allowing infringers a free holiday and the ability to infringe without consequence or penalty.  In recent days, the House IP subcommittee has piled on, looking for ways to further reduce venue for plaintiffs in infringement suits and turning into a forum for attacking judges on patent cases and the critics of patent reform.

While factions within the U.S. seriously discuss further dismantling the U.S. patent system in favor of infringers, China takes the lead in increasing the enforceability of patents.

CAFC transfers case from Eastern Texas to Northern California

On Thursday, February 23, 2017, the United States Court of Appeals for the Federal Circuit granted a mandamus petition filed by Google, and ordered a Texas federal court to transfer a patent infringement case to a federal court that covers Silicon Valley, as requested by Google. See In re: Google Inc. This extraordinary remedy was delivered in the form of a non-precedential opinion authored by Chief Judge Prost and joined by Judge Lourie. Despite the Federal Circuit’s designation of the decision as non-precedential, the Court should be prepared for the onslaught of mandamus petitions that will now be filed given that they have shown a willingness to step in and re-weigh transfer factors de novo.

This petition for writ of mandamus arose out of a patent infringement suit brought by Eolas Technologies, Inc. against Google and various other defendants involving U.S. Patent No. 9,195,507. On the day this lawsuit was filed against Google, Eolas also filed two related suits in the same district, accusing various Walmart and Amazon entities of infringement. The Walmart and Amazon entities, like Google, sought transfer to the Northern District of California under 28 U.S.C. § 1404(a) for convenience. Weighing the relevant transfer factors, the district court concluded that the Northern District of California was not clearly a more convenient forum than the Eastern District of Texas.

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Sony sues Fujifilm on 3M-acquired patents

Sony Corporation recently filed a patent infringement lawsuit in U.S. District Court for the Southern District of Florida against Japanese photography and imaging company Fujifilm. At the center of Sony’s legal action are magnetic tape products marketed by Fujifilm which allegedly practice technology copied from Sony without a license.

In the official complaint filed by Sony, the company asserts a series of four patents, which it alleges Fujifilm infringed through the sale of the company’s Linear Tape-Open (LTO) format magnetic tapes, specifically generation four, five and six LTO tapes (LTO-4, LTO-5, LTO-6).

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Efficient infringers should have to pay

During a recent webinar on the current state of patent valuation, Ashley Keller, co-founder and Managing Director of Gerchen Keller, and I discussed the phenomenon of efficient infringement.

Efficient infringement, which can be a rather cold-hearted business calculation, is when a decision is made to infringe regardless (or in spite of) the presence of patents and whether the underlying activity will constitute patent infringement. Rather than seek out or take an offered patent license, it is determined that it would be better, cheaper and certainly more expedient to simply infringe.

To my surprise, Keller did not really have a problem with efficient infringement. Rather, Keller’s issue is more nuanced. Efficient infringement is an acceptable business decision but those that choose to efficiently infringe should be required to pay for infringement when caught, which is where the system is breaking down presently.

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SCOTUS takes Samsung appeal in Apple design patent infringement case

On Monday, March 21, 2016, the United States Supreme Court agreed to hear the matter of Samsung Electronics v. Apple, Inc., a dispute between two giant technology companies that at its core relates to how much Samsung owes Apple for infringing certain design patents.

So far, these two technology giants have shown little interest in playing nice. A jury found that Samsung infringed Apple design patents, Apple utility patents and also diluted Apple’s trade dresses. The infringed design patents are U.S. Design Patent Nos. D618,677 (“D’677 patent”), D593,087 (“D’087 patent”), and D604,305 (“D’305 patent”), which claim certain design elements embodied in Apple’s iPhone. The infringed utility patents are U.S. Patent Nos. 7,469,381 (“’381 patent”), 7,844,915 (“’915 patent”), and 7,864,163 (“’163 patent”), which claim certain features in the iPhone’s user interface. The diluted trade dresses are Trademark Registration No. 3,470,983 (“’983 trade dress”) and an unregistered trade dress defined in terms of certain elements in the configuration of the iPhone.

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