Patent Law Practice Center

Supreme Court To Review Standard For Proving Induced Patent Infringement

Written by Brandon Baum (Partner at Mayer Brown and Practice Center Contributor) and Matt Watts[1].

The state of mind requirement for proving induced patent infringement under 35 U.S.C. §  271(b) has been the subject of recent and, according to some, inconsistent opinions from the Federal Circuit. On October 12, 2010, the Supreme Court granted certiorari in Global-Tech Appliances, Inc. v. SEB S.A., WL 2629783 (2010), presumably to resolve the confusion.

Section 271(b) states: “[w]hoever actively induces infringement of a patent shall be liable as an infringer.”  While there are many factual scenarios under which a patentee might pursue an inducement claim rather than or in addition to a direct infringement claim, it is frequently invoked where the act of direct infringement is performed by the end-user of a product.  Under Section 271(b), the patentee need not sue the many end-users of a product who directly infringe, but instead may pursue the entity that sold the product to the end-users. Read the rest of this entry »

Reexamination Request Against Honeywell’s HFC Patent Among Those Filed Week of October 4th

Here is this week’s  installment of Reexamination Requests from our friends at Reexamination Alert….

Honeywell has obtained a number of patents in recent years for hydrofluorocarbon (HFC) patents.  HFCs are environmentally friendly alternatives to the hydrochlorofluorocarbons for use in aerosols and refrigerants.  Inter partes Request No. 2 below challenges Honeywell’s patent.

A request was also filed against Medicis’ patent (Ex parte Request No. 9) for foaming pad containing benzoyl peroxide, used to treat acne.  The ‘355 patent is the subject of a contentious case in Arizona, filed earlier this year. Read the rest of this entry »

CAFC Finds HFC Patent Valid: Honeywell Was Not “Another Inventor” under § 102(g)(2)

The following post comes from Scott Daniels, partner at Westerman,Hattori, Daniels & Adrian, LLP and Practice Center Contributor.

This Wednesday the CAFC held in Solvay v. Honeywell that Honeywell’s activities in the United States did not constitute prior art under 35 U.S.C. § 102(g)(2) against Solvay’s U.S. Patent No. 6,730,817.  The CAFC therefore reversed the trial court’s summary judgment that the patent was rendered invalid by Honeywell’s activities.  Solvay’s ‘817 patent claims a method for making hydrofluorocarbons (HFCs) that are used in refrigeration and aerosol systems, as environmentally-friendly alternatives to chlorofluorocarbons (CFCs).

Paragraph (g) is the so-called “interference provision” of Section 102, but it also defines prior art that may be used in infringement actions, as in the present Solvay case.  Section 102(g)(2) provides in relevant part that a person is entitled to a patent if  “before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it” (emphasis added).  The issue for the CAFC was whether Honeywell was “another inventor,” i.e., had it invented the claimed process.  The CAFC said no. Read the rest of this entry »

Contemporary Issues in Patent Royalty Damages

Written by our friends at Kilpatrick Stockton, E. Danielle Thompson Williams and Leslie T. Grab, Ph.D..

TMI:  How Much Settlement Information is Too Much Settlement Information?

I. Introduction

“Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty.”[1]  Damages are a hotly contested issue in nearly every patent litigation.  Patentees have traditionally had three remedies available to compensate for patent infringement:  lost profits; an established royalty; or a reasonable royalty.  Each of the remedies considered unique information on which a patentee could rely in establishing a damages award.  When requesting a reasonable royalty, patentees also often relied on the entire market value rule as another tool to determine the amount of the damages award.  However, a recent string of cases has changed the methodologies for determining a reasonable royalty as well as the standard for using the entire market value rule.  These cases put both the district courts and patent litigants on notice that the standards for establishing damages have been tightened.  Patentees must now “carefully tie proof of damages to the claimed invention’s footprint in the marketplace.”[2]  These decisions have benefits and risks for both plaintiffs and defendants in litigation that include both settlement strategies as well as expert testimony. Read the rest of this entry »

The ITC End-Around District Court Stays Pending Patent Reexamination

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

The greatest season of the year, is neither winter, spring, summer or fall, it is football season. Despite the fact that my Eagles are looking hapless these days, and my fantasy football teams are already in the toilet (thanks a lot Larry Fitzgerald), still the NFL season is always exciting. Teams once left for dead rise again, Hail Mary’s are answered (unless Jason Avant is involved, curse his name) and last second strategies rule the day.

What does all of this have to do with patent law?….nothing really, patent law is nowhere near as exciting. Yet, every once in awhile a new strategy appears that changes the game. Much like the NFL, patent practice is a “copycat league,” so, very likely coming to a patent litigation near you….the “ITC end-around.”

For those not familiar with the football end-around, this play, as diagrammed above is an exercise in misdirection. With a very aggressive defense going one way, an offensive team fakes into the direction of the defense, only to toss the ball to a player running around the defense in the opposite direction. A form of this tactic was recently executed by Motiva in their dispute with Nintendo. Read the rest of this entry »