Patent Law Practice Center

Auburn V. IBM Among The Reexamination Requests Filed Week Of March 14, 2011

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

Auburn v. IBM is not a “sweet-sixteen” match-up.  It’s an infringement litigation pending in the District Court in Alabama since 2009.  IBM has now requested reexamination of Auburn’s patents – U.S. Patent Nos. 7,194,366 & 7,409,306, both claiming ways of estimating the reliability of integrated circuits and thereby reducing the cost of making chips (see inter partes Request Nos. (2) & (3)).

Xilinx continued its assault on Intellectual Ventures’ patents – this week requesting reexamination of U.S. Patent No. 7,080,301 (see inter partes Request No. (7)), and perhaps U.S. Patent Nos. 6,065,880 and 6,687,865 (see ex parte Request Nos. (16) & (18)). The PTO records are, as yet, unclear regarding the requester of the latter two requests, but it appears to have been Xilinx.

Apple, the clear leader in recent times in the number of requests filed, continued its practice of seeking reexamination of each patent-in-suit whenever it is sued (see ex parte Request Nos. (10), (11) & (13)).  Other noteworthy requests include those filed against Lincoln Globaland 3M patents (see inter partes Request Nos. (1) & (11) and ex parteRequest No.(1)). (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…)