December 2009

A patent owner, suing for infringement of his patent, may find that the defendant has substantial arguments as to non-infringement. However, if there is a pending continuation of the patent-in-suit, the patent owner may be able to overcome such non-infringement defenses by adding new claims to the continuation, which are specifically tailored to the defendant’s products or services.

An earlier blog, The End Of a Rule?, dealt with Microsoft’s appeal of an award of TWO HUNDRED MILLION DOLLARS in damages to i4i in a patent infringement case. As we noted, the appellate judges asked questions and made statements which seemed to indicate that they favored Microsoft’s position. Well, the decision is now in. Microsoft lost!

“Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word ‘patent’ or any word or number importing that the same is patented, for the purpose of deceiving the public … Shall be fined not more than $500 for each such offense.” 35 U.S.C. §292(a)

“… [a]ny person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.” 35 U.S.C. §292(b)

Much has been written about the decision of the Supreme Court in KSR Int’l. Co. v. Teleflex, Inc. Unfortunately, much of this writing is philosophical blather which only serves to obfuscate the case holding. A recent decision of the C.A.F.C., Perfect Web Technologies, Inc. v. InfoUSA, Inc., however, may provide some much needed clarification.

The famous – or infamous, if you’re an N.P.E. – eBay decision has eliminated the automatic injunction formerly awarded to prevailing patentees. Now, the courts are to apply the “4 part test” traditionally applicable to the award of equitable relief. As a practical matter, the trial court must now decide whether the prevailing patentee will suffer any “irreparable harm” if the scum sucking infringer continues to infringe. All well and good – if you’re not an N.P.E. – but which party bears the burden of proving the “irreparable harm”?

While the world – at least the patent world – awaits the Supreme Court decision in In re Bilski, the trial courts continue to hand down surprisingly consistent decisions based upon the C.A.F.C.’s Bilski decision. Given that everyone now seems to understand the existing decision, it seems a shame that the Supreme Court could – and probably will – upset the apple cart by rendering an entirely new decision which will, at least for a while, confuse everyone.

Some time ago, Smith & Nephew, Inc. sued Arthrex, Inc., claiming it had infringed a patent related to suture anchors for repairing damaged tissue. The jury found for the plaintiff and awarded $15M in damages. The trial court then granted the plaintiff a permanent injunction. Arthrex, as losing defendants are wont to do, appealed. Earlier this month, the C.A.F.C. handed down its decision. (Smith & Nephew Inc. et al. v. Arthrex Inc.)

While we generally are on the side of the “little guy,” when such is engaged in legal combat with a corporate colossus, there are limits which, when exceeded, compel us to root for the “big guy.” One such case is Starbucks Corporation v. Wolfe’s Borough Coffee, Inc.

Several recent blogs have dealt with cases of clients suing their former counsel. Now, we have a case of a federal judge suing government lawyers, alleging that his Fifth Amendment rights have been violated. Porteous v. Baron et al. (For those readers who don’t watch LAW & ORDER on television, the Fifth Amendment to the U.S. Constitution established the right against self-incrimination.)

Nearly five years ago, NTP successfully asserted five patents against Research in Motion (RIM), winning a judgment of $53.7M and the award of a permanent injunction. The district court stayed enforcement of the injunction, pending an appeal to the Court Of Appeals For The Federal Circuit. The C.A.F.C. upheld many of the district court findings, but remanded the case to reconsider some of the claim construction issues. Before the lower court could revisit these issues, the parties settled the case.

Among the types of prior art which may be considered by a patent examiner during examination of a patent application is “printed publications.” Fine, so what, exactly, is a “printed publication?”

In order to qualify as a printed publication, a reference “must have been sufficiently accessible to the public interested in the art.” It is “sufficiently accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”

The past year has seen a growing trend towards clients suing their attorneys (actually, their former attorneys) for legal malpractice. While many of these suits may be well-founded, it would appear that one, at least, is not. (Leviton Manufacturing Co., Inc. v. Greenberg Traurig LLP et al.)

A few weeks ago, we wrote about a case where a jury found in favor of the plaintiff in a patent infringement suit and, on the very next day, the USPTO decided that the defendant was actually the first to invent the subject matter of the patents and, therefore, the rights to the patents belonged not to the plaintiff, but to the defendant.

A patent owner whose patent is being infringed by the importation of infringing goods into this country may be able to sue the importer (scum sucker) in the International Trade Commission (I.T.C.). While the I.T.C. cannot award damages to a prevailing patent owner, it will (except in rare cases) issue an “exclusionary order” barring the further importation of infringing goods. Such an order is, in effect, quite similar to a permanent injunction.

Oh, how the mighty have fallen. Once, the Ford Motor Company was one of the richest and most powerful commercial enterprises in the world. Now, attorneys argue, in court, that it may be unable to pay the damages awarded by a jury which found Ford guilty of patent infringement. (Jacob Krippelz, Sr. v. Ford Motor Company.)

A year ago, the jury awarded Krippelz $23 Million in damages for infringement of his patent on a “puddle lamp” which is built into the side view mirrors of certain Ford automobiles.