New Federal Circuit Opinions - December 24, 2014

Fleming v. Escort Inc., Nos. 2014-1331, -1371 (Fed. Cir. Dec. 24, 2014).

New Federal Circuit Opinions - December 23, 2014

Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, Nos. 2013-1588, -1589, 2014-1112, -1687 (Fed. Cir. Dec. 23, 2014).

New Federal Circuit Opinions - December 22, 2014

Aqua Shield v. Inter Pool Cover Team, No. 2014-1263 (Fed. Cir. Dec. 22, 2014).

New Federal Circuit Opinions - December 19, 2014

Stryker Corp. v. Zimmer, Inc., No. 2013-1668 (Fed. Cir. Dec. 19, 2014).

New Federal Circuit Opinions - December 17, 2014

Univ. of Utah Research Found. v. Ambry Genetics Corp., Nos. 2014-1361, -1366 (Fed. Cir. Dec. 17, 2014).

New Federal Circuit Opinions - December 15, 2014

Promega Corp. v. Life Techs. Corp., Nos. 2013-1011, -1029, -1376 (Fed. Cir. Dec. 15, 2014).

New Federal Circuit Opinions - December 9, 2014

Japanese Found. for Cancer Research v. Lee, Nos. 2013-1678, 2014-1014 (Fed. Cir. Dec. 9, 2014).

New Federal Circuit Opinions - December 5, 2014

Memorylink Corp. v. Motorola Solutions, Inc., No. 2014-1186 (Fed. Cir. Dec. 5, 2014).
Sandoz Inc. v. Amgen Inc., No. 2014-1693 (Fed. Cir. Dec. 5, 2014).
DDR Holdings, LLC v. Hotels.com, L.P., No. 2013-1505 (Fed. Cir. Dec. 5, 2014).

New Federal Circuit Opinions - December 4, 2014

Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., Nos. 2013-1324, -1381 (Fed. Cir. Dec. 4, 2014).
Ericsson, Inc. v. D-Link Sys., Inc., Nos. 2013-1625, -1631, -1632, 1633 (Fed. Cir. Dec. 4, 2014).

New Federal Circuit Opinions - December 3, 2014

Par Pharm., Inc. v. TWi Pharm., Inc., No. 2014-1391 (Fed. Cir. Dec. 3, 2014).

New Federal Circuit Opinions - November 20, 2014

Versata Software, Inc. v. Callidus Software Inc., No. 2014-1468 (Fed. Cir. Nov. 20, 2014).

New Federal Circuit Opinions - November 19, 2014

e.Digital Corp. v. Futurewei Techs., Inc., No. 2014-1019 (Fed. Cir. Nov. 19, 2014).

New Federal Circuit Opinions - November 17, 2014

Antares Pharma, Inc. v. Medac Pharma Inc., No. 2014-1648 (Fed. Cir. Nov. 17, 2014).

New Federal Circuit Opinions - November 14, 2014

Ultramercial, LLC v. Hulu, LLC, No. 2010-1544 (Fed. Cir. Nov. 14, 2014).

New Federal Circuit Opinions - November 6, 2014

Azure Networks, LLC v. CSR PLC, No. 2013-1459 (Fed. Cir. Nov. 6, 2014).

New Federal Circuit Opinions - November 5, 2014

In re Reines, No. 14-MA004 (Fed. Cir. Nov. 5, 2014).
Williamson v. Citrix Online, LLC, No. 2013-1130 (Fed. Cir. Nov. 5, 2014).

New Federal Circuit Opinions - October 22, 2014

Halo Elecs., Inc. v. Pulse Elecs., Inc., Nos. 2013-1472, -1656 (Fed. Cir. Oct. 22, 2014).

New Federal Circuit Opinions - October 21, 2014

IRIS Corp. v. Japan Airlines Corp., No. 2010-1051 (Fed. Cir. Oct. 21, 2014).

New Federal Circuit Opinions - October 20, 2014

World Class Tech. Corp. v. Ormco Corp., Nos. 2013-1679, 2014-1692 (Fed. Cir. Oct. 20, 2014).
AntiCancer Inc. v. Pfizer Inc., No. 2013-1056 (Fed. Cir. Oct. 20, 2014).
Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc., No. 2013-1306 (Fed. Cir. Oct. 20, 2014) (Order denying Bristol-Myers Squibb's petition for panel hearing and rehearing en banc).

New Federal Circuit Opinions - October 17, 2014

CardSoft, Inc. v. VeriFone Holdings, Inc., No. 2014-1135 (Fed. Cir. Oct. 17, 2014).

New Federal Circuit Opinions - October 14, 2014

SSL Servs., LLC v. Citrix Sys., Inc., Nos. 2013-1419, -1420 (Fed. Cir. Oct. 14, 2014).
Robert Bosch LLC v. Snap-On, Inc., No. 2014-1040 (Fed. Cir. Oct. 14, 2014).

New Federal Circuit Opinions - September 29, 2014

EMD Millipore Corp. v. AllPure Techs., Inc., No. 2014-1140 (Fed. Cir. Sept. 29, 2014).

New Federal Circuit Opinions - September 26, 2014

Am. Calcar, Inc. v. Am. Honda Motor Co.,  No. 2013-1061 (Fed. Cir. Sept. 23, 2014).

New Federal Circuit Opinions - September 25, 2014

Benefit Funding Sys. LLC v. Advance Am. Cash Advance Ctrs., Inc.,  Nos. 2014-1122, -1124, -1125 (Fed. Cir. Sept. 25, 2014).
uPI Semiconductor Corp. v. Int'l Trade Comm'n, No. 2013-1157 (Fed. Cir. Sept. 25, 2014).

New Federal Circuit Opinions - September 17, 2014

SCA Hygiene Prods. AB v. First Quality Baby Prods., LLC, No. 2013-1564 (Fed. Cir. Sept. 17, 2014).
STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. Sept. 17, 2014).

New Federal Circuit Opinions - September 16, 2014

VirnetX, Inc. v. Cisco Sys., Inc., No. 2013-1489 (Fed. Cir. Sept. 16, 2014).
Jang v. Boston Scientific Corp., No. 2014-134 (Fed. Cir. Sept. 16, 2014) (Order).

New Federal Circuit Opinions - September 10, 2014

Scientific Plastic Prods., Inc. v. Biotage AB, Nos. 2013-1219, -1220, -1221 (Fed. Cir. Sept. 10, 2014).
Interval Licensing LLC v. AOL, Inc., Nos. 2013-1282, -1283, -1284, -1285 (Fed. Cir. Sept. 10, 2014).

New Federal Circuit Opinions - September 5, 2014

EPOS Techs. Ltd. v. Pegasus Techs. Ltd., No. 2013-1330 (Fed. Cir. Sept. 5, 2014).

New Federal Circuit Opinions - September 3, 2014

buySAFE, Inc. v. Google, Inc., No. 2013-1575 (Fed. Cir. Sept. 3, 2014).

New Federal Circuit Opinions - August 22, 2014

Ferring B.V. v. Watson Labs., Inc. – Fla., No. 2014-1416 (Fed. Cir. Aug. 22, 2014).
Ferring B.V. v. Apotex, Inc., No. 2014-1377 (Fed. Cir. Aug. 22, 2014).
Mformation Techs., Inc. v. Research in Motion Ltd., Nos. 2012-1679, 2013-1123 (Fed. Cir. Aug. 22, 2014).

New Federal Circuit Opinions - August 21, 2014

AbbVie, Inc. v. Mathilda & Terrance Kennedy Inst. of Rheumatology Trust, No. 13-1545 (Fed. Cir. Aug. 21, 2014).

New Federal Circuit Opinions - August 15, 2014

Apotex, Inc. v. UCB, Inc., No. 2013-1674 (Fed. Cir. Aug. 15, 2014).

New Federal Circuit Opinions - August 11, 2014

State of Vermont v. MPHJ Tech. Invs., LLC, No. 2014-1481 (Fed. Cir. Aug. 11, 2014).

New Federal Circuit Opinions - August 6, 2014

Tyco Healthcare Grp. LP v. Mutual Pharm. Co., No. 2013-1386 (Fed. Cir. Aug. 6, 2014).
ScriptPro LLC v. Innovation Assocs., Inc., No. 2013-1561 (Fed. Cir. Aug. 6, 2014).

New Federal Circuit Opinions - August 1, 2014

Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2013-1212 (Fed. Cir. Aug. 1, 2014).

New Federal Circuit Opinions - July 25, 2014

ePlus, Inc. v. Lawson Software, Inc., Nos. 2013-1506, -1587 (Fed. Cir. July 25, 2014).

New Federal Circuit Opinions - July 24, 2014

In re Nokia Inc., No. 2014-133 (Fed. Cir. July 24, 2014) (Order).

New Federal Circuit Opinions - July 18, 2014

Align Tech., Inc. v. Int'l Trade Comm'n, Nos. 2013-1240, -1363 (Fed. Cir.  July 18, 2014).

New Federal Circuit Opinions - July 17, 2014

Arlington Indus., Inc. v. Bridgeport Fittings, Inc., No. 2013-1357 (Fed. cir. July 17, 2014).

New Federal Circuit Opinions - July 14, 2014

Medisim Ltd. v. BestMed LLC, No. 2013-1451 (Fed. Cir. July 14, 2014).
Golden Bridge Tech., Inc. v. Apple Inc., No. 2013-1496 (Fed. Cir. July 14, 2014).

New Federal Circuit Opinions - July 11, 2014

H-W Tech., L.C. v. Overstock.com, Inc., Nos. 2014-1054, -1055 (Fed. Cir. July 11, 2014).  
Troy v. Samson Mfg., No. 2013-1565 (Fed. Cir. July 10, 2014). 
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., Nos. 2013-1600 through 1618 (Fed. Cir. July 11, 2014).

New Federal Circuit Opinions - July 10, 2014

Stauffer v. Brooks Bros. Group, Inc., No. 2013-1180 (Fed. Cir. July 10, 2014).
VirtualAgility Inc. v. Salesforce.com, Inc., No. 2014-1232 (Fed. Cir. July 10, 2014).

New Federal Circuit Opinions - July 7, 2014

X2Y Attenuators, LLC v. Int'l Trade Comm'n, Nos. 2013-1340 (Fed. Cir. July 7, 2014).
Retractable Techs., Inc. v. Becton, Dickinson & Co., No. 2013-1567 (Fed. Cir. July 7, 2014).

New Federal Circuit Opinions - July 1, 2014

AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., Nos. 2013-1338, -1346 (Fed. Cir. July 1, 2014).

MadStad Eng’g, Inc. v. U.S. Patent & Trademark Office, Nos. 2013-1511, -1512 (Fed. Cir. July 1, 2014).

New Federal Circuit Opinions - June 27, 2014

Hill-Rom Servs., Inc. v. Stryker Corp., No. 2013-1459 (Fed. Cir. June 27, 2014).

New Federal Circuit Opinions - June 25, 2014

In re Nintendo of America, Inc., No. 2014-132 (Fed. Cir. June 25, 2014) (Motion Panel Order).

New Federal Circuit Opinions - June 24, 2014

CEATS, Inc. v. Continental Airlines, Inc., No. 2013-1529 (Fed. Cir. June 24, 2014).

New Federal Circuit Opinions - June 20, 2014

Augme Techs., Inc. v. Yahoo! Inc., Nos. 2013-1121, -1195 (Fed. Cir. June 20, 2014).

New Supreme Court Opinions - June 19, 2014

Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 73 U. S. ____ (2014).

New Federal Circuit Opinions - June 19, 2014

Gemalto S.A. v. HTC Corp., No. 2013-1397 (Fed. Cir. June 19, 2014).

New Federal Circuit Opinions - June 13, 2014

Triton Tech of Texas, LLC v. Nintendo of Am., Inc., No. 2013-1476 (Fed. Cir. June 13, 2014).

New Federal Circuit Opinions - June 12, 2014

Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., No. 2013-1306 (Fed. Cir. June 12, 2014).

New Federal Circuit Opinions - June 10, 2014

Allergan, Inc. v. Apotex Inc., Nos. 2013-1245, -1246, -1247, -1249 (Fed. Cir. June 10, 2014).

In re Dinsmore, No. 2013-1637 (Fed. Cir. June 10, 2014).

New Federal Circuit Opinions - June 9, 2014

Q.I. Press Controls, B.V. v. Lee, Nos. 2012-1630, -1631 (Fed. Cir. June 9, 2014).

New Federal Circuit Opinions - June 6, 2014

STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. June 6, 2014).

New Federal Circuit Opinions - June 5, 2014

Source Vagabond Sys. Ltd. v. Hydrapak, Inc., Nos. 2013-1270, -1387 (Fed. Cir. June 5, 2014).

New Federal Circuit Opinions - June 4, 2014

Consumer Watchdog v. Wisconsin Alumni Research Foundation, No. 2013-1377 (Fed. Cir. June 4, 2014).
In re Rambus, Inc., No. 2013-1192 (Fed. Cir. June 4, 2014).
Krauser v. BioHorizons, Inc., No. 2013-1461 (Fed. Cir. June 4, 2014).

New Supreme Court Opinions - June 2, 2014

Limelight Networks, Inc. v. Akamai Techs. Inc.,  572 U.S. ___ (2014) (holding that a defendant is not liable for inducing infringement under 35 U.S.C. §271(b) when no one has directly infringed under §271(a) or any other statutory provision).

Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. ___ (2014)(holding that the test for indefiniteness is "reasonable certainty," not “amenable to construction” or “insolubly ambiguous”).

New Federal Circuit Opinions - May 27, 2014

K/S HIMPP v. Hear-Wear Techs., LLC, No. 2013-1549 (Fed. Cir. May 27, 2014).
Suffolk Techs., LLC v. AOL Inc., No. 2013-1392 (Fed. Cir. May 27, 2014).

New Federal Circuit Opinions - May 19, 2014

Tobinick v. Olmarker, No. 2013-1499 (Fed. Cir. May 19, 2014).

New Federal Circuit Opinions - May 9, 2014

Monsanto Co. v. E.I. Du Pont de Nemours & Co., No. 2013-1349 (Fed. Cir. May 9, 2014).
InTouch Techs., Inc. v. VGo Commc’ns, Inc., No. 2013-1201 (Fed. Cir. May 9, 2014).
Oracle Am., Inc. v. Google Inc., Nos. 2013-1021, -1022 (Fed. Cir. May 9, 2014).

New Federal Circuit Opinions - May 8, 2014

Gen. Electric Co. v. Wilkins, No. 2013-1170 (Fed. Cir. May 8, 2014).

In re Roslin Institute (Edinburgh), No. 2013-1407 (Fed. Cir. May 8, 2014).

New Federal Circuit Opinions - May 6, 2014

In re Packard, No. 2013-1204 (Fed. Cir. May 6, 2014).

Risk Management for U.S. Patent Infringement Lawsuits

The article co-authored by Lei Mei of Mei & Mark LLP and titled “Risk Management for U.S. Patent Infringement Lawsuits” was published in the March 2014 edition of Guangdong LED Magazine.
 
A copy of the article (English Version) is reproduced below:

The Chinese LED market is growing rapidly in the past few years. It is becoming an important player in the world market. It is obvious that the LED industry is more and more popular, as indicated by the growing litigation cases in the United States.

On September 11, 2013 Nichia sued Everlight Electronics in federal court in Marshall, Texas for alleged infringement of U.S. Patent No. 7,432,589 (“the ’589 patent”). The complaint alleges that Everlight’s LED model 61-238/RSGBB7C-B02/ET infringes the ’589 patent. The ’589 patent is directed to a semiconductor device capable of preventing an adhesive for die bonding from flowing to a wire bonding area. This is not the first lawsuit between these LED rivals.

On September 30, 2013, the United States District Court for the Central District of California issued a Final Judgment and Order imposing an injunction that prohibits Lights of America from making any misrepresentations about its LED products. The decision also includes a substantial monetary judgment, ordering Lights of America to pay the Federal Trade Commission over $21 million dollars.

Moreover, on September 20, 2013, the Trustees of Boston University filed patent infringement litigation against more than 20 companies in federal court in Boston regarding its LED patent 5,686,738. Defendants include Acer, Nikon, Sony, Dell, Fuji and others.

All these cases remind us about the importance of our own risk management. This section will discuss how Chinese companies may develop risk management strategies for U.S. patent infringement lawsuits.

I. Identify Potential Risks

As for any risk management, the starting point is to identify potential risks. Regarding U.S. patent infringement lawsuits, potential risks come in two forms: direct risks and indirect risks.

Direct risks, prevalent among semiconductor manufacturers, may come from product design. For example, during the R&D process, engineers might have studied competitors’ technology or patents to develop their own solutions. If the final product has features that would be covered by third party patents, it creates direct risks of potential patent infringement lawsuits.

Indirect risks, common among packaging companies that source semiconductor materials from manufacturers, may come from contracts and purchasing agreements. For example, when a packaging company enters a contract to purchase semiconductor components from a component manufacturer, the contract may be silent on potential IP liabilities regarding the components, or even release manufacturers from any future liabilities. As a result, the packaging company may be liable for patent infringement because of the components it purchased. Certainly, bargaining powers among the contracting parties may determine the wording of these contract provisions, but one must be aware of this type of indirect risks.

In addition, Chinese companies that do not directly import or sell components in the U.S. may face indirect risks of patent infringement lawsuits in the U.S. For example, customers of Chinese companies may buy and package the components in Asia and then sell final products in the U.S. A U.S. patent owner may then petition the United States International Trade Commission (ITC) to institute a Section 337 investigation that may exclude importation into the U.S. of any products containing infringing components.

To fully evaluate direct and indirect risks, Chinese companies should engage competent U.S. counsel to perform due diligence at every step of the production cycle.

II. Minimize Potential Risks

After identifying potential risks, Chinese companies will need to minimize potential risks of patent infringement lawsuits. Generally speaking, successful companies have adopted three common approaches.

First, design around to avoid your competitors’ patents. To minimize expenses, designing around should take place in the early phase of R&D, and one must continue to monitor competitors’ patenting efforts throughout the R&D process. Naturally, Chinese companies should not design around alone without input of competent U.S. counsel, because determining the scope of patent claims requires in-depth legal analysis.

Second, when designing around is not preferable (too costly or difficult), Chinese companies may retain competent U.S. counsel to render opinions on validity or infringement or both. Although an opinion letter is not required to defeat willful infringement (and potential treble damages) under recent U.S. case law, it is still desirable to have one because it will save future litigation costs and remove some uncertainties of the litigation.

Third, strategically patent the technologies that will cover your competitors’ products. Typically, in the semiconductor industry, products may be covered by many patents owned by different companies. Owning patents that cover a competitor’s products may enable you to negotiate a cross licensing deal so that both companies will be able to make and sell products without facing each other’s patent infringement lawsuit.

III. Manage Actual Risks

Unfortunately, some potential risks are inevitable to avoid. Therefore, Chinese companies must also be prepared to face and manage actual risks. For example, in the U.S., patent holding companies operate under a business model where they do not make any products themselves (thus unlikely to be sued for infringing other companies’ patents), but seeks royalties through licensing and patent enforcement. Therefore, Chinese companies need to learn how to handle U.S. patent infringement lawsuits.

This section will discuss two areas that are particularly relevant to Chinese companies: personal jurisdiction and electronic discovery. When you receive a copy of the complaint of a U.S. patent infringement lawsuit, you may consider taking several strategic steps in response.

First, evaluate your position in the stream of commerce. For example, do you sell products in the U.S.? Do you import products to the U.S.? Do you sell products in China, but your customers sell or import products into the U.S.?

On the one hand, if you sell or import products into the U.S., it is most likely that at least one U.S. district court has jurisdiction. The question then becomes which U.S. district court has jurisdiction. If the products are not sold in or imported into a particular district (e.g., Maryland), then this particular U.S. district court may not have jurisdiction. The plaintiff, however, may bring a suit in the appropriate U.S. district court.

On the other hand, if you sell the products only in China, but eventually the products are imported to and sold in the U.S., the situation becomes more complicated and requires careful analysis by U.S. counsel. For example, in Technology Patents, LLC v. Deutsche Telekom AG, No. AW-07-3012, slip op. at 2 (D. Md. Aug. 29, 2008), China Mobile and Singapore Telecom were named as two of many defendants in a U.S. district court in Maryland, but did not sell products in the U.S., as they merely allowed its existing users to send text messages while traveling in Maryland through agreements with U.S. wireless carriers. Therefore, they were not subject to personal jurisdiction in Maryland.

In contrast, if you sell your products to a customer, knowing that the customer will either import the products directly to the U.S. or package them with other components and import the final products to the U.S., it is more likely that you will be subject to personal jurisdiction in at least one U.S. district court.

Second, develop defense strategies by working with U.S. counsel to determine, for example, whether the company should file a motion to dismiss the lawsuit for lack of personal jurisdiction. Obviously, the decision depends on specific facts in individual cases. Additionally, U.S. counsel will help you identify potential issues, access risks, and develop appropriate defenses.

Third, prepare for document production if the lawsuit is not dismissed. As discussed earlier, discovery is a major component of U.S. patent litigation, and failure to produce relevant documents will result in severe sanctions. For example, in Qualcomm Inc. v. Broadcom Corp., No. 05 Civ. 1958, 2008 WL 66932 (S.D. Cal. Jan. 7, 2008), the judge ordered more than $8.5 million against Qualcomm, the plaintiff, for failure to produce relevant emails.

Typically, the judge will set a discovery schedule in the beginning of the case, so each party must be prepared to preserve the evidence and produce relevant documents timely. Accordingly, Asian companies should work with competent counsel to develop a discovery plan including identifying all relevant documents for production.

With careful preparation, Asian companies can learn to manage actual risks and handle patent infringement lawsuits smoothly.

New Federal Circuit Opinions - May 5, 2014

Microsoft Corp. v. DataTern, Inc., Nos. 2013-1184, -1185 (Fed. Cir. May 5, 2014).

New Federal Circuit Opinions - May 1, 2014

GE Lighting Solutions, LLC. v. AgiLight, Inc., No. 2013-1267 (Fed. Cir. May 1, 2014).

New Supreme Court Opinions - April 29, 2014

Octane Fitness, LLC v. Icon Health & Fitness, Inc., 572 U. S. ____ (2014) (holding that the  Federal Circuit's Brooks Furniture framework that defined an “exceptional case” as one which either involves “material inappropriate conduct” or is both “objectively baseless” and “brought in subjective bad faith” is unduly rigid and impermissibly encumbers the statutory grant of discretion to district courts).

Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U. S. ____ (2014) (holding that all aspects of a district court’s exceptional-case determination under §285 should be reviewed for abuse of discretion).

New Federal Circuit Opinions - April 25, 2014

Apple Inc. v. Motorola, Inc., Nos. 2012-1548, -1549 (Fed. Cir. Apr. 25, 2014).

New Federal Circuit Opinions - April 24, 2014

Vaillancourt v. Becton Dickinson & Co., No. 2013-1408 (Fed. Cir. Apr. 24, 2014).

St. Jude Med., Cardiology Div. Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014).
In re Dominion Dealer Solutions, LLC, No. 109 (Fed. Cir. Apr. 24, 2014).
In re Proctor & Gamble Co., No. 121 (Fed. Cir. Apr. 24, 2014).

New Federal Circuit Opinions - April 22, 2014

Braintree Labs., Inc. v. Novel Labs., Inc., No. 2013-1438 (Fed. Cir. Apr. 22, 2014).
Gilead Scis. Inc. v. Natco Pharma Ltd., No. 2013-1418 (Fed. Cir. Apr. 22, 2014).

New Federal Circuit Opinions - April 21, 2014

Sanofi-Aventis Deutschland Gmbh v. Glenmark Pharms. Inc., No. 2012-1489

New Federal Circuit Opinions - April 18, 2014

DSM Desotech, Inc. v. 3D Sys. Corp., No. 2013-1298 (Fed. Cir. Apr. 18, 2014).

New Federal Circuit Opinions - April 11, 2014

Hoffmann-La Roche Inc. v. Apotex Inc., No. 2013-1128 (Fed. Cir. Apr. 11, 2014).

New Federal Circuit Opinions - April 9, 2014

Trebro Mfg., Inc. v. FireFly Equip., LLC, No. 2013-1437 (Fed. Cir. Apr. 9, 2014).

New Federal Circuit Opinions - April 7, 2014

Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, No. 2013-1326 (Fed. Cir. Apr. 7, 2014).

New Federal Circuit Opinions - April 4, 2014

Microsoft Corp . v. DataTern, Inc., No. 2013-1184 (Fed. Cir. Apr. 4, 2014).
In re. Teles AG Informationstechnologien, No. 2012-1297 (Fed. Cir. Apr. 4, 2014).

New Federal Circuit Opinions - April 3, 2014

In re Toyota Motor Corp., No. 2014-113 (Fed. Cir. Apr. 3, 2014) (Ruling on motion).

New Federal Circuit Opinions - April 2, 2014

MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Fed. Cir. Apr. 2, 2014).

New Federal Circuit Opinions - March 31, 2014

Senju Pharm. Co. v. Apotex Inc., No. 2013-1027 (Fed. Cir. Mar. 31, 2014).

Endo Pharm., Inc. v. Actavis Inc., Nos. 2013-1658, -1662 (Fed. Cir. Mar. 31, 2014).

New Federal Circuit Opinions - March 28, 2014

Shire Dev. LLC v. Watson Pharm., Inc., No. 2013-1409 (Fed. Cir. Mar. 28, 2014).

New Federal Circuit Opinions - March 26, 2014

StoneEagle Services, Inc. v. Gillman, No. 2013-1248 (Fed. Cir. Mar. 26, 2014).

New Federal Circuit Opinions - March 24, 2014

Brain Life, LLC v. Elekta Inc., No. 2013-1239 (Fed. Cir. Mar. 24, 2014).

New Federal Circuit Opinions - March 20, 2014

Energy Recovery, Inc. v. Hauge, No.  2013-1515 (Fed. Cir. Mar. 20, 2014).

New Federal Circuit Opinions - March 18, 2014

Alcon Research Ltd. v. Barr Labs. Inc., Nos. 2012-1340, -1341 (Fed. Cir. Mar. 18, 2014).

New Federal Circuit Opinions - March 14, 2014

Vederi, LLC v. Google, Inc., No. 2013-1057 (Fed. Cir. Mar. 14, 2014).

New Federal Circuit Opinions - March 12, 2014

Therasense, Inc. v. Becton, Dickinson & Co., No. 2012-1504 (Fed. Cir. Mar. 12, 2014).

New Ways to Combat Counterfeiting and Piracy in China

Note: This article is published by IP Law360 on March 11, 2014. The content is reproduced below.

New Ways to Combat Counterfeiting and Piracy in China

Lei Mei, Managing Partner, Mei & Mark LLP

Linfeng Qiu, General Counsel, Hangzhou IP Protection & Management Center

E-commerce sales in China have skyrocketed in recent years. For example, on a single day, November 11, 2013, the leading Chinese E-commerce website, Taobao.com, sold a record-breaking 35 billion RMB ($5.77 billion) worth of merchandise online. Unfortunately, many Chinese websites have online merchandise that include counterfeit and pirated products, as noted in the 2013 list of Notorious Markets by the United States Trade Representative Office (“USTR”). Therefore, IP owners, including U.S. consumer products companies, must develop a new effective strategy in combating trademark counterfeiting and copyright piracy in China in this digital age.

As an initial matter, it is worth noting that China does have comprehensive trademark and copyright laws and regulations that may be used to combat trademark counterfeiting and copyright piracy, and China’s central government has made it a high priority to protect intellectual property rights. For example, if there is a dispute regarding trademark or copyright rights, the owner of the registered trademark or copyright may bring a lawsuit in a People’s Court or request a local administrative department for industry and commerce (i.e., the local commerce department) to handle the matter.

Unlike the United States, local commerce departments in China have the authority to order an infringer to cease infringing upon that right immediately, to confiscate and destroy the goods involved and the tools used to manufacture the said goods and counterfeit the representations of the registered trademark or copyright, and to also impose a fine, without a court’s order. A party dissatisfied with the commerce department’s decision may bring a lawsuit in a People’s Court in accordance with the Administrative Procedure Law of the People’s Republic of China.

Despite these laws and regulations, it is still questionable as to the effectiveness of enforcement by local courts and commerce departments in specific cases. As the United States International Trade Commission noted in a 2010 report, “[s]ignificant structural and institutional impediments undermine effective enforcement, including the protection of IPR infringing industries by local Chinese officials, a lack of coordination among government agencies, insufficient enforcement resources and training, and non-deterrent civil and criminal penalties.” Today, local protectionism is still a legitimate concern in many parts of China, although enforcement efforts are more effective in big cities.

U.S. companies have traditionally used local Chinese law firms and/or investigative agents to crack down on physical counterfeiting activities. The problem, however, has always been that when a small factory is shutdown, another one springs up elsewhere. There have also been instances where some rogue investigative agents manufactured fake infringing activities to crack down on in order to collect more fees from IP owners. As a result, it could be very difficult for IP owners to achieve desired enforcement results in China.

In addition, traditionally, the burden of obtaining admissible evidence is upon IP owners, as China’s law does not require a civil defendant to voluntarily produce relevant documents or provide relevant information (although a new amendment to China’s trademark law, taking effect on May 1, 2014, does allow burden of discovery to be shifted in certain circumstances).

Interestingly, the solution to the traditional challenges of cracking down on physical counterfeiting activities lies with the digital evolution. With the emergence of websites like Taobao.com, online marketplace has become the main sales channel for counterfeit and pirated products in China. Therefore, IP owners could develop new enforcement mechanism to combat trademark counterfeiting and copyright piracy in China in this digital age.

Surprisingly, it is actually easier and more effective to combat trademark counterfeiting and copyright piracy online for several reasons. First, e-commerce websites typically show off product photos to the public, which can be easily and safely downloaded as evidence of infringement. This removes the obstacle of gathering evidence in a traditional physical marketplace in China, which not only is difficult but also could be dangerous at times.

 

Second, IP owners can easily obtain pricing and sales data of counterfeit and pirated products from e-commerce websites and use those for damages calculation. In general, damages are based on the amount of the profits that the infringer has earned as a result of the infringement or the amount of the losses that the infringed party has suffered as a result of the infringement. In a traditional physical marketplace, it is very difficult to prove damages because of the difficulty in obtaining relevant evidence from infringers.

Third, many leading e-commerce websites are operated by established Chinese companies in China’s more developed regions where IP enforcement has been more effective. For example, Taobao.com is operated by Alibaba Group, a leading Chinese e-commerce company in Hangzhou, the capital of Zhejiang province in Eastern China. For obvious reasons, it is easier to demand these established companies to remove counterfeit and pirated products from their online e-commerce websites.

Indeed, USTR has removed Taobao.com from its Notorious Markets List since 2012, noting that although “Taobao.com was included in previous Notorious Markets Lists for the widespread availability of counterfeit and pirated goods in its electronic marketplace,” it was removed from the List in 2012 “in recognition of [Taobao.com’s] efforts to address these problems.” According to USTR, “Taobao.com has assured the United States that it will continue to work with rights holders and law enforcement officials in China to address remaining issues raised by software, publishing and apparel and footwear companies.”

Finally, several Chinese provinces have established semi-governmental IP protection and management centers for cracking down on trademark counterfeiting and copyright piracy. These centers provide an efficient platform for IP owners to serve notices to e- commerce website operators and demand removal of the counterfeit and pirated products. Typically, these centers function similar to private firms, but due to their semi-governmental status, their involvements could make enforcement efforts more efficient and cost-effective.

As China’s e-commerce websites continues to gain popularity with estimated sales of 1.85 trillion RMB ($305 billion) in 2013, there are new and effective ways for U.S. IP owners to combat trademark counterfeiting and copyright piracy in China. With proper counseling and favorable local support, U.S. IP owners can achieve success in enforcing and protecting their IP rights.

New Federal Circuit Opinions - March 11, 2014

Danisco US Inc. v. Novozymes A/S, No. 2013-1214 (Fed. Cir. Mar. 11, 2014).

New Federal Circuit Opinions - March 3, 2014

Ancora Techs., Inc. v. Apple Inc., Nos. 2013-1378, -1414 (Fed. Cir. Mar. 3, 2014).

New Federal Circuit Opinions - February 27, 2014

In re Apple Inc., Misc. Docket No. 156 (Fed. Cir. Feb. 27, 2014). 

In re Barnes & Noble, Inc., Misc. Docket No. 162 (Fed. Cir. Feb. 27, 2014). 

New Federal Circuit Opinions - February 24, 2014

elcommerce.com, Inc. v. SAP AG, No. 2011-1369 (Fed. Cir. Feb. 24, 2014).
Starhome GmbH v. AT&T Mobility LLC, No. 2012-1694 (Fed. Cir. Feb. 24, 2014).
GlaxoSmithKline LLC v. Banner Pharmacaps, Inc., Nos. 2013-1593, -1594, -1595, -1598 (Fed. Cir. Feb. 24, 2014).

New Federal Circuit Opinions - February 21, 2014

Frans Nooren Afdichtingssytemen BV v. Stopaq Amcorr Inc., No. 2013-1200 (Fed. Cir. Feb. 21, 2014).

Lighting Ballast Control, LLC v. Philips Electronics North America Corp., No. 2012-1014 (Fed. Cir. Feb. 21, 2014) (en banc).

New Federal Circuit Opinions - February 19, 2014

Ring & Pinion Serv. Inc. v. ARB Corp., No., 2013-1238 (Fed. Cir. Feb. 19, 2014).

New Federal Circuit Opinions - February 12, 2014

Solvay S.A. v. Honeywell Int'l Inc., No. 2012-1660 (Fed. Cir. Feb. 12, 2014).

New Federal Circuit Opinions - February 10, 2014

Tempo Lighting, Inc. v. Tivoli, LLC, No. 2013-1140 (Fed. Cir. Feb. 10, 2014).

New Federal Circuit Opinions - January 31, 2014

EnOcean GmbH v. Face Int'l Corp., No. 2012-1645 (Fed. Cir. Jan. 31, 2014).

New Federal Circuit Opinions - January 22, 2014

Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., No. 2013-1117 (Fed. Cir. Jan. 22, 2014).

New Federal Circuit Opinions - January 15, 2014

Novartis AG v. Lee, Nos. 2013-1160, -1179 (Fed. Cir. Jan. 15, 2014).

New Federal Circuit Opinions - January 13, 2014

In re Enhanced Security Research, No. 2013-1114 (Fed. Cir. Jan. 13, 2014).

In re Giannelli, No. 2013-1167 (Fed. Cir. Jan. 13, 2014).

Proveris Scientific Corp. v. Innovasystems, Inc., Nos. 2013-1166, -1190 (Fed. Cir. Jan. 13, 2014).

New Federal Circuit Opinions - January 8, 2014

Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC, No. 2013-1199 (Fed. Cir. Jan. 8, 2014).