Patent Law Practice Center

Pleading Intent to Deceive in False Marking: How much is enough?

Written by Scott Daniels (partner in Westerman Hattori Daniels & Adrian and Practice Center Contributor).

It is undisputed that a qui tam claim for false patent marking under 35 U.S.C. § 292 requires, in addition to marking an unpatented article, that the marking be done with intent to deceive the public.  Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295, 1300 (Fed. Cir. 2009).  But how specifically must the qui tam plaintiff plead “intent to deceive” to comply with the Rule 9(b) requirement that allegations of fraud be made with particularity?  Unfortunately, the CAFC declined to answer that question in Stauffer v. Brooks Brothers, Inc., decided last month.  Without guidance from the CAFC, the answer appears to depend upon the court in which the complaint is filed.

At the more lenient end of the spectrum is Judge Robert W. Gettleman who in Simonian v. Oreck, Case No. 1:10-cv-01224 (N.D. Ill, August 23, 2010) denied the Defendant Oreck’s motion under Rule 12(b)(6) to dismiss because of the failure of the complaint to make more than a general allegation of deceptive intent. Judge Gettleman applied the who-how-what-when-where standard that has been used by a number of courts.  He concluded that Plaintiff Simonian’s complaint adequately stated that Oreck (the who) had deliberately falsely marked (the how), the particular product (the what), the marking was current (the when), within the District and throughout the United States (the where).  He also found that the allegations, despite their generality, created a presumption: “By alleging that defendants had knowledge of their false marking and that the marks were false creates a rebuttable presumption of deceptive intent.” Read the rest of this entry »

Discovery Issues in Patent Litigation: Making the Most of the Federal Rules

The following is an excerpt from an article written by Douglas Nemec (Partner at Skadden and Practice Center Contributor), and his colleagues Hope S. Yates, Devin Kothari and Gayle Denman.

Try to imagine patent litigation without discovery.  For most of us such a thing is hard to conceive.  Aside from the rare case in which a court grants a temporary restraining order or preliminary injunction request based only on the moving papers, U.S. courts simply do not grant relief for patent infringement without first allowing some discovery.  Practitioners outside the U.S. may question whether discovery is really necessary, but that point is seldom debated in the U.S.  Rather, the ongoing debate in U.S. federal practice revolves around how to make the discovery process maximally efficient without sacrificing its very purpose – the discovery of evidence.  After all, the great struggle in every patent litigation is balancing the fact that discovery is by far the most expensive part of the process with the fact that the vast majority of cases settle during the course of discovery, as a result of facts revealed through discovery.

Reasoned debate has yielded the Federal Rules of Civil Procedure, an ever-evolving set of rules governing discovery (and all other procedure) in the U.S. district courts.  Supplementing the rules is an enormous body of case law interpreting and applying the Federal Rules, as well as other procedural rules and concepts.  The existence of the Federal Rules will not be news to any reader of this article.  Yet many of the rules are underutilized or neglected entirely, particularly in evolving areas such as electronic (e-) discovery.  Many practitioners, moreover, take a formulaic approach to discovery that saves expense in the short run but ultimately leads to inefficiency and exposes them to a plethora of dangers that advance planning and adherence to the prescriptions of the Federal Rules would otherwise eradicate.  The purpose of this article is first to propose alternatives to certain inefficient discovery practices, and second to cast new light on various procedural rules and principles that practitioners can employ to enhance the effectiveness and efficiency of discovery. Read the rest of this entry »

Reexamination Requests Filed the Week of September 6th

Here is the latest  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor which includes the requests for the week of September 6th….

Last week saw two blockbuster sets of filings – Shared Marketing Services filed ex parte requests against five eComSystems patents (6) to (10), and Illinois Tool Works filed ex parte requests against seven patents belonging to Digi-Star (13) to (19).  Illinois Tool has appeared in many reexaminations over the years.  In both instances, the respective parties are in litigation.

Two other ex parte reexamination requests may prove to be commercially significant, one filed against a Hitachi semiconductor patent (25), and another filed against a Kubota tractor patent (30).  The names of the companies that filed these requests are not apparent from the files.

Finally, information regarding the last of the eight PubPat requests against Abbott, inter partes (8), became available last week. Read the rest of this entry »

Federal Circuit: Foreign Application Not Priority in Interference When it Only “Envisions” Invention

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass.  The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application.  The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count.  If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Goeddel was a consolidated appeal from two decisions of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office in two related patent interference priority contests between the party Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (together “Sugano”) and the party David V. Goeddel and Roberto Crea (together “Goeddel”).  The Board held that Sugano is entitled to the benefit of the filing date of its initial Japanese application, and awarded Sugano priority as to the counts of both interferences. Read the rest of this entry »

In the Wake of MedImmune: What We Have Learned

The following guest post comes from Lisa A. Dolak, Professor of Law at Syracuse University and Practice Center Contributor.

In its 2007 decision in MedImmune, Inc. v. Genentech, Inc., the Supreme Court held that “Article III’s limitation of federal courts’ jurisdiction to ‘Cases’ and ‘Controversies,’ reflected in the ‘actual controversy’ requirement of the Declaratory Judgment Act, 28 U.S.C. § 2201(a)” does not require “a patent licensee to terminate or be in breach of its license agreement before it can seek a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed.”  Although MedImmune was decided in the context of a non‑breaching licensee’s action against its licensor-patentee, it altered the patent enforcement/licensing landscape more generally, specifically, by expanding the circumstances under which the district courts have the power to entertain declaratory judgment claims.

The Supreme Court held that the Federal Circuit had erred in holding that jurisdiction could not lie under the circumstances because the license agreement insulated MedImmune from a “‘reasonable apprehension of suit’”.   In the three and a half years since MedImmune was decided, the Federal Circuit has had the opportunity to apply its teachings in a variety of contexts.  The following summary highlights the key lessons from those Federal Circuit decisions. Read the rest of this entry »