November 2009

A successful plaintiff in a patent infringement lawsuit is awarded damages as compensation for the defendant’s past acts of infringement. If the plaintiff is practicing the patented invention, it will – most likely – also be awarded a permanent injunction barring the defendant from committing any further acts of infringement. Whereas the grant of a permanent injunction was formerly automatic, the courts must now – thanks to eBay – apply a “four-factor test” to determine whether an injunction is appropriate.

Three years ago, the Supreme Court ruled, in eBay v. MercExchange LLC, that a prevailing plaintiff, in a patent infringement suit, is not automatically entitled to an award of a permanent injunction against the infringer (scum sucker). Rather, the trial court was to apply the traditional four-factor test.

In September, the Court Of Appeals For The Federal Circuit heard oral arguments in Microsoft’s appeal of a trial court decision awarding i4i hundreds of millions of dollars in damages for patent infringement. Although the appellate decision has not yet been rendered, much of interest may be gleaned from the questions posed by the appellate judges.

Much of the questioning revolved around the fact that the patented invention, a method of editing Extensible Markup Language (XML) files, is only one feature amongst many found in the accused Microsoft Word product.

The reader – especially the reader who voted Democrat in the past presidential election – may be familiar with the so-called “Obama Hope” image which has graced posters, tee shirts, drinking glasses, ash trays, place mats and assorted knick-knacks. The alleged creator of this image, Mr. Shepard Fairey, recently made news as he sued The Associated Press for a declaratory judgment that the said image did not infringe any of their copyrights.

Throughout history – at least recent history – parties accused of patent infringement have shown remarkable ingenuity and creativity in devising and asserting new defenses to the claims made against them. However, we are here to acknowledge a “first” – the first attack on a patent on the grounds that its enforcement would be unconstitutional; specifically, that it would violate First Amendment rights.

Recently, a jury in a patent infringement case found for the plaintiff, deciding that all three patents-in-suit were “valid” (actually, “not invalid”) and infringed. A happy plaintiff, right? Wrong! The very next day, the Patent Office Board of Patent Appeals and Interferences (the B.P.A.I.) ruled that the defendant was actually the first to invent the subject matter of the patents and that rights to these inventions, therefore, belonged not to the plaintiff, but to the defendant.

Sometimes it seems that we have become so inured to wrongdoing that only a transgression of mammoth proportions draws our attention and offends our sense of propriety – Bernie Madoff being a prime example. Well, a team of lawyers now stands accused of improperly withholding forty-six THOUSAND (46,000) documents from discovery. Qualcomm Inc. v. Broadcom Corp. Yes indeed, folks, a new world’s record in discovery misconduct.

Many self-proclaimed “inventors” seem unable to fully comprehend the distinction between a “concept” and an “invention.” This failure is most commonly seen in patent applications – often filed pro se – directed to computer-implemented processes. The patent application for such an invention typically recites one or more system components without actually disclosing a corresponding algorithm.

In yet another in the recent spate of clients suing their (former) lawyers, a new wrinkle has emerged – the Court has ordered the plaintiff to produce certain documents pertaining to communications with their subsequently retained counsel. (Landmark Screens, LLC v. Morgan, Lewis & Bockius LLP and Thomas D. Kohler) Yes, indeed, the Court ordered the production of privileged documents.