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A recent blog post dealt with the question of what happens when the prevailing patentee in an infringement action is denied a permanent injunction and the infringer continues to infringe.

It now seems, based on an unbroken string of two (2) cases, that the court directs the parties to attempt to negotiate a royalty for future use of the patented invention. If the parties are unable to reach an agreement, the court – meaning the judge – can impose a royalty rate for any future use by the defendant-infringer (slimeball).

Often, a change in political administrations produces a change in interpretation of the anti-trust laws. Liberals see every act of large corporations as detrimental to the interests of the “working man” (what do politicians know about “working”) and, hence, seek to utilize an expansive enforcement of the anti-trust laws to control the corporations. Conservatives, not being so paranoid, favor a more limited application of the anti-trust laws.

Recently, we wrote about a shrinking judgment. Today, we are writing about one which grew. Paice LLC v. Toyota Motor Corp.

The economy must be in really bad shape, as it appears we have reached a point where the lawyers are reduced to suing each other (Waggoner v. Chadbourne & Parke). In this case, a California attorney sued a New York law firm, in California, on behalf of a Texas client. The lawsuit alleges that the (New York) law firm charged its (Texan) client more for online legal research – such as Westlaw and LexisNexis – than the law firm actually paid, thus earning a secret profit. The Texan allegedly paid about $20,000 for services that cost the law firm about $5,000.

As unlikely as it may seem, some misguided individuals actually hold lawyers in low esteem. Indeed, they exhibit a great deal of unreasoned antipathy towards lawyers. So, in keeping with our goal of trying to attract as many readers as possible – however ridiculous their beliefs – we report on the case of Ecast Inc. v. Morrison & Foerster LLP, wherein the defendants are lawyers. Yes, rejoice all you benighted clods, someone sued lawyers, alleging malpractice and breach of fiduciary duty.

by Alexander Poltorak - Mr. Grove was recently quoted in the article by Jonathan Thaw and Susan Decker, “Grove Says Patent System May Have Same Flaws as Derivatives” (Bloomberg.com, May 4 2009). With all due respect to Mr. Grove, he simply doesn’t understand the meaning of, and the underlying motivation for, patents.

As a refreshing change of topic, let’s turn our attention to trademarks. The T.T.A.B. (the Trademark Trial and Appeal Board – the Trademark Office internal appellate body) recently addressed a “question of first impression” (sounds impressive, doesn’t it?), namely whether fraud as to one class of a multiple class registration subjects the entire registration subject to cancellation. G&W Laboratories, Inc. v. GW Pharma Limited

The costs of IP litigation are astronomical – and rising. Ever the spin doctors, some law firms see this as an opportunity. They emphasize the conventional ways in which IP litigants can seek to control costs:

(1) find attorneys with lower hourly billing rates;

(2) keep legal teams small to minimize (billable) time devoted to intra-team communications;

(3) avoid litigating in so-called “rocket dockets” where compressed case schedules necessitate larger litigation teams;

(4) develop case strategy early and do not allow diversion;

A previous blog entry – which will not be repeated here – dealt with the strange case of Cornell University v. Hewlett Packard Co., wherein the plaintiff, despite warnings by the trial judge that their damages model was defective, initially sought damages of $575M. The jury found for the plaintiff and awarded damages of $184M. The judge reduced the award to $53M.

Recently, the USPTO rejected claims in a pending patent application directed to the cDNA encoding the human natural killer cell activation inducing ligand (NAIL) protein. The patent examiner took the position that the claimed invention was obvious because the protein was known in the prior art and there were also known, reliable methods for identifying the gene sequence that codes for NAIL.

The patent applicants appealed to the Patent Office Board of Appeals, which affirmed the rejection. Undaunted, the applicants appealed that decision to the CAFC.

Apportionment of damages, one of the most controversial provisions of the proposed patent reform, may already be upon us (some damages experts believe it has been all along).

By now, the reader must have heard of the famous – or infamous, depending on viewpoint – Supreme Court decision in eBay. (eBay, Inc. v. MercExchange, LLC, 547 U.S. 338).

The perceptive reader may have noticed that the economy is in distress (economic term meaning “deep doo doo”). This raises the unpleasant specter of bankruptcies among one’s IP licensees. What happens to an IP license when the licensee becomes bankrupt? More specifically, can the licensee – now technically known as a “debtor-in-possession” – assume the license? The answer to this fascinating question depends on location.

As you probably recall, Q. Todd Dickinson started as deputy in early 1998 and then served as director of the USPTO until January 2001, during a critical juncture in its history. He dealt with Congress as it passed the American Inventors Protection Act of 1999, the last major legislative amendment to the patent law, and managed the PTO as it was reconstituted a Performance-Based Organization of the government. He also initiated planning for agency’s relocation from Crystal City to the Carlisle Campus in Arlington.

The avid blog reader may remember the recent post regarding the seminal (lawyerspeak for “really, really important”) C.A.F.C. decision in Bilski.

Patentees may mark their patented articles with the appropriate patent number so as to give notice to the public that the article is patented (so-called “constructive notice”). In the event the patentee or any licensee fails to so mark (known in the legal profession as a “screw-up”), no damages may be recovered for infringement of the patent unless and until the infringer is given “actual notice” of the infringement; and then only for infringement occurring after receipt of such notice (not surprisingly, filing of suit is itself considered to constitute actual notice).

The first two parts of this trilogy dealt with infringement issues relating to who performs the steps set forth in a method claim and whether one who domestically produces a device contributes to infringement by one using the device abroad. Does infringement occur when the steps of a single method claim are performed by different parties? Does it occur if the method is practiced abroad utilizing equipment exported from this country?

In a decision which defines the limits of the Patent Office’s rule-making authority, the C.A.F.C. largely has sided with the Office. (Tafas et al. v. Durdas) Four rules were at issue: Two of the rules would have placed limitations on the number of continuation applications which an applicant could file. The other two rules would have placed limitations on the number of claims which could be presented in an application.

Everyone knows – or should know – that a party in litigation or contemplating litigation is under a duty to preserve all relevant evidence. One (or more than one) might reasonably question the extent of this duty. Is the duty a negative one (“don’t destroy evidence”) or an affirmative one (“take steps to preserve the evidence”)? Well, the court has just provided some guidance. Phillip M. Adams & Associates LLC v. Lenovo International et al. In that case, the court sanctioned the defendant, even while holding that it may not have intentionally destroyed evidence.