Patent Law Practice Center

Foley & Lardner: Senate Introduces Patent Reform Act of 2011

On Tuesday, the Senate introduced the Patent Reform Act of 2011.  While the latest version is similar to previous patent reform bills, there are some significant changes made in the 2011 proposed legislation.  Our friends at Foley & Lardner sent in this alert discussing the new bill and how the House plans to address patent reform in 2011.

On January 25, 2011, Sens. Patrick Leahy (D-Vt.), Orrin Hatch (R-Utah), and Chuck Grassley (R-Iowa) introduced the latest bill on patent reform legislation—the Patent Reform Act of 2011.  According to Sen. Leahy, the new legislation is based on prior legislation introduced during the 109^thCongress, as well as compromises reached in March 2010 (the Managers’ Amendment to S. 515). A January 20, 2011 press release on Sen. Leahy’s Web site states, “[p]romoting economic growth continues to be a top priority for both Democrats and Republicans, and patent reform is part of that effort.” When introducing the bill, Sen. Leahy explained that the new legislation is intended to accomplish three primary goals: (1) transition to a first-to-file system; (2) improve patent quality; and (3) provide more certainty in litigation. The Act also includes provisions to limit standing and damages in false patent marking actions. However, Sen. Leahy did not directly address how he intends to resolve key differences with the House that carry over from last year’s stalled bill (S. 515), which contains many of the same provisions as the new bill. Meanwhile, the House has announced a new hearing that it will conduct on the link between patent reform and job creation, suggesting that it intends to obtain more input before considering legislative changes. Several of the key provisions of the recently introduced Senate bill are discussed in more detail below. (more…)

Attorneys’ Fees Under Section 285: A Double Standard in Patent Litigation

By Brandon Baum ( Partner at Mayer Brown LLP and Practice Center Contributor) and Jonathan Helfgott[i]

Under 35 U.S.C. § 285 (“§ 285”), “[t]he court in exceptional cases may award attorney fees to the prevailing party.”  Although the statutory language does not differentiate between prevailing plaintiffs and defendants, the Federal Circuit has developed substantially different standards for determining whether a case is “exceptional” depending on which party prevails.

In the context of a prevailing plaintiff, a court may find a case “exceptional” by showing that the defendant engaged in “willful infringement.” Minks v. Polaris Indus., 546 F.3d 1364, 1375 (Fed. Cir. 2008) (upholding exceptional case determination and award of attorneys’ fees based on jury finding of willful infringement).  “An express finding of willful infringement is a sufficient basis for classifying a case as ‘exceptional,’ and indeed, when a trial court denies attorney fees in spite of a finding of willful infringement, the court must explain why the case is not ‘exceptional’ within the meaning of the statute.”  Modine Mfg. Co. v. Allen Group, Inc., 917 F.2d 538, 543 (Fed. Cir. 1990); Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 972 (Fed. Cir. 2000) (same).  To demonstrate willful infringement, the patentee must show “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).   As the Federal Circuit made clear in Seagate, this is an objective test under which an infringer may be found to have acted willfully when it knew or should have known of the risk. Id. (more…)

Accused Infringer Uses Reexamination To Defeat Willfulness Allegation

Scott Daniels, partner at Westerman, Hattori, Daniels & Adrian LLP and Practice Center Contributor, sent along his analysis on the recent District Court decision, Plumley v. Mockett.  In a decision that may surprise many,  the District Court held that the accused infringer may use reexamination to obtain summary judgment of no willful infringement.  According to Daniels, “the first goal of a third party requesting reexamination is to
 invalidate the patent claims.  But even if the Patent Office confirms 
the validity of the claims, the reexamination may significantly benefit
 the requester on other issues, such as claim construction,  infringement, 
and inequitable conduct.”

Below is Scott Daniels’ analysis…

A party accused of patent infringement requests reexamination at the PTO to attack the patent as being anticipated or obvious in view of a prior art patent or printed publication.  An accused infringer, however, may also achieve other less obvious goals by seeking reexamination, such as creating an estoppel, creating a disclaimer limiting claim scope, or establishing the materiality of a prior art reference for an inequitable conduct defense.  Or, as in Plumley v. Mockett, the accused infringer may use reexamination to obtain summary judgment of no willful infringement.  2010 U.S. Dist. LEXIS 57254 (C.D. Cal. May 26, 2010). (more…)