March 2010

With all of the criticism being levied against so-called “patent trolls,” we were very interested in a lawsuit recently filed against a self-proclaimed and self-righteous “anti-troll” organization. (Limelight Networks, Inc. v. Allied Security Trust et al.)

Is a court’s summary judgment decision that your patent is invalid the end of the line? Not necessarily, at least not if you play your cards right. You may be able to convince the court to vacate its decision! (Gracenote, Inc. v. MusicMatch, Inc.)

Recently, the C.A.F.C. affirmed a lower court ruling that Montgomery Ward & Co. had induced infringement of a patent held by SEB, S.A. Now, the American Intellectual Property Lawyers Association and the Federal Circuit Bar Association have submitted a joint amici curiae brief seeking an en banc review of this decision in order to “clarify the legal standard required to prove induced infringement.”

While suing attorneys is certainly a fun activity, it is not without its risks. As we previously noted, it is sometimes better to let sleeping dogs lie. Some people, unfortunately, did not get the message. (Sokol Holdings Inc. et al. v. Dorsey & Whitney LLP)

Baby care products are a big and highly profitable business and, like all highly profitable businesses, attract crime. Two recently filed cases are prime examples of this exploding crime wave: Pepperidge Farm Inc. v. The Gymboree Corp. and Anheuser-Busch Inc. v. Baby Beer Bottles Inc. et al.

By now the reader should be familiar with the Markman hearing (in case the reader somehow missed it, the Markman hearing is where the judge construes various words and phrases of patent claims being asserted). The reader may also be aware of the Daubert hearing, where the judge decides whether a proffered expert witness is indeed expert enough to be allowed to testify.

It would appear that suing lawyers for malpractice has become so popular that it may become an Olympic event. If it does, we know of one party that is not likely to win the gold. (Rockwood Retaining Walls, Inc. et al. v. Patterson, Thuente, Skaar & Christensen PA)

In case anyone still cares – and they SHOULD – the famous, or infamous, Amazon 1-click patent is about to emerge from a four (4) year re-examination. Five of the original claims (nos. 6-10) have been confirmed, while 21 claims (nos. 1-5 and 11-26) have been allowed as amended. The amendment adds the limitation that the 1-click system is employed in conjunction with the “shopping cart model.” Since the shopping cart model is used by most retail e-commerce websites, this added limitation does not appreciably narrow the scope of the claims.

Some time ago, we wrote of the fascinating case of Capitol Records Inc. v. Thomas-Rasset, where a jury found the defendant guilty of illegally downloading twenty-four (24) songs and assessed damages of $222K. On appeal, Thomas-Rasset was awarded a new trial. The second jury again found her guilty, awarding $80K per song, or $1.92M (yup, almost two million bucks) in damages. Then, late in January, the Chief Judge described the second verdict as “monstrous and shocking” and ordered it reduced to $54K.

In 1996, the law governing the term of a U.S. patent changed. Today, a patent expires twenty (20) years from the date of filing of the corresponding patent application. For patent applications filed under the old law, the applicants may elect a term extending seventeen (17) years from the date of issue of the patent. The perceptive reader will have noted that, under the old law, time spent in prosecution was not deducted from the term of the patent.

The patent statute provides that “in the absence of any agreement to the contrary,” each joint owner of a patent enjoys the right to exercise the patent rights without accounting to the other owners. The key phrase here is “in the absence of any agreement to the contrary.” If there is an agreement between joint owners, the agreement controls. (Wisconsin Alumni Research Foundation (WARF) v. Xenon Pharma)

It’s bad enough when you sue for patent infringement and lose. It’s worse when you lose and are ordered to pay the defendant’s attorney’s fees and costs. (Martec, LLC v. Johnson & Johnson and Cordis Corporation)

The latest in a spate of legal malpractice claims is one where we can only shake our heads and wonder, “what were they thinking?” (Davis v. Brouse McDowell)

Recently, we came across an article, "The Art Of Writing License Invitation Letters," written by a couple of attorneys from the Greenberg Traurig law firm. The article offers advice on drafting letters which offer the recipient a patent license, without conferring standing to bring a declaratory judgment action (known as a “DJ” to those of us in the patent biz).

A patent which is procured through “inequitable conduct” is unenforceable. Periodically, the C.A.F.C. states that the defense of inequitable conduct is over-utilized and, therefore, it is looked upon – by the C.A.F.C. – with “disfavor.” Of course, these pronouncements do not prevent the trial courts from finding inequitable conduct, nor the C.A.F.C. from affirming these findings. Most claims of inequitable conduct arise out of allegations that the patentee has withheld prior art from the patent examiner.