Patent Law Practice Center

En Banc Oral Argument In Two Important Patent Cases: Therasense Inequitable Conduct Standard and TiVo Contempt for Attempted Design Around

The following alert was written by our friends at Foley & Lardner.

On November 9, 2010, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, heard oral argument in two important patent cases. The first, Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al., concerns whether the current materiality-intent balancing framework for determining inequitable conduct should be modified and, if so, how. The second case, TiVo, Inc. v. EchoStar Corp., No. 09-1374, concerns the circumstances under which a district court, following a finding of infringement at trial, might then use a contempt proceeding, instead of a new trial, to determine whether a newly accused device infringes.

Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al. — Inequitable Conduct

Under the current standard, patent unenforceability based on inequitable conduct — whether a patent applicant somehow breached his duty of candor and good faith to the USPTO during prosecution — is frequently asserted by accused patent infringers as a defense to infringement. The Federal Circuit has previously expressed concerns that inequitable conduct is invoked too often. In Therasense, the court could make it more difficult to assert the defense in future cases. (more…)

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. (more…)

Federal Circuit Restricts Joint Infringement Doctrine in Golden Hour Data v. emsCharts

Brandon Baum, partner in Mayer Brown and Practice Center Contributor, passed along this analysis on the Federal Circuit decision Golden Hour Data Systems, Inc. v. emsCharts, Inc.

In the recent case of Golden Hour Data Systems, Inc. v. emsCharts, Inc., the Federal Circuit reiterated—and arguably restricted—its jurisprudence concerning “joint infringement.”  The joint infringement doctrine is an exception to the general rule that “[d]irect infringement requires a party to perform or use each and every step or element of a claimed method or product.”  BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. Cir. 2007).  Where the steps or elements are performed by multiple actors, there may still be a finding of direct infringement under the joint infringement doctrine if the accused infringer had “direction or control” over the other actors.  Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008).  In a 2-1 panel decision, the court found that the fact that the defendants collaborated to sell their software together as part of a “strategic partnership” was insufficient, as a matter of law, to establish joint infringement.

In the underlying district court case, plaintiff Golden Hour Data Systems, Inc. (“Golden Hour”) accused two defendants, emsCharts, Inc. (“emsCharts”) and Softtech, LLC (“Softtech”) of acting jointly to infringe its patent (U.S. 6,117,073) on systems and methods for emergency medical management.  emsCharts provides software that charts patient diagnosis and billing information, but does no flight dispatching.  Softtech provides flight dispatch software used in emergency helicopters to coordinate patient pickup and delivery, but offers no billing, charting or diagnosis.  emsCharts and Softtech formed a strategic partnership to enable their two programs to work together, and collaborated to sell the two programs as a unit. (more…)

The Plot Thickens in Apple Patent Battle with HTC

By Gene Quinn (of  IPWatchdog.com and Patent Center Contributor)

There has been yet another development in what is fast shaping up to be an epic patent battle between Apple Inc.(NASDAQ: AAPL) and High Tech Computer Corp.(PINK:HTCCF) (aka HTC Corp.), HTC (B.V.I.) Corp, HTC America, Inc. and Exeda, Inc. (collectively referred to as HTC).  On Monday, June 21, 2010, Apple filed yet another complaint against HTC in the United States District Court for the District of Delaware.  On March 2, 2010, Apple, Inc.  filed two lawsuits against HTC Corp., alleging that HTC infringes some 20 Apple patents related to the iPhone’s user interface, underlying architecture and hardware.

The latest Apple complaint continues to allege direct infringement of Apple patents, this time four separate patents.  The complaint also alleges indirect infringement; specifically contributory infringement and inducement to infringe.  The patent asserted by Apple are US Patent No. 7,282,453 (Count I); US Patent No. 7,657,849 (Count II); US Patent No. 6,282,646 (Count III) and US Patent No. 7,380,116 (Count IV).  The ‘453 patent and the ‘849 patent were both asserted previously by Apple (see what I have previously referred to as the second complaint filed March 2, 2010).  It appears as if they are added here due to recently issued Certificates of Correction.  The ‘646 patent and the ‘116 patent were not previously asserted in either of the two complaints filed March 2, 2010 in the District of Delaware.

Read the entire article at IPWatchdog.com

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…)