Thursday, March 4, 2010
New Federal Circuit Opinions - March 4, 2010
Tivo, Inc. v. EchoStar Corp., No. 2009-1374 (Fed. Cir. Mar. 4, 2010).
Fairchild Semiconductor Files Patent Lawsuit Against Power Integrations in China
According to Fairchild Semiconductor's news release, available here,
Comments:
It is interesting to see that Fairchild is moving its IP battle with Power Integrations from the United States to China. Because Power Integrations has been winning cases against Fairchild and its subsidiaries, this move does not really come as a surprise. Nowadays, most IC chips are made in China anyway, so if Fairchild prevails in China, Power Integrations would lose business globally including the U.S. market.
We will follow this landmark China case. If the outcome is favorable to Fairchild, it could open a flood gate for other companies to try their luck in China. Because the Chinese judicial system is less transparent and less predictable, however, it remains to be seen how this case will turn out.
Fairchild is seeking a permanent injunction preventing the sale, manufacture or use in China, or the importation into China, of Power Integrations products alleged to infringe four Chinese patents, including products in the TinySwitch II, TinySwitch III, LinkSwitch II, LinkSwitch XT and TOPSwitch GX product families. The company is also seeking monetary damages. The lawsuit was filed in Suzhou Intermediate Court.
Comments:
It is interesting to see that Fairchild is moving its IP battle with Power Integrations from the United States to China. Because Power Integrations has been winning cases against Fairchild and its subsidiaries, this move does not really come as a surprise. Nowadays, most IC chips are made in China anyway, so if Fairchild prevails in China, Power Integrations would lose business globally including the U.S. market.
We will follow this landmark China case. If the outcome is favorable to Fairchild, it could open a flood gate for other companies to try their luck in China. Because the Chinese judicial system is less transparent and less predictable, however, it remains to be seen how this case will turn out.
Tuesday, March 2, 2010
New Federal Circuit Opinions - March 2, 2010
Davis v. Brouse McDowell, L.P.A., No. 2009-1395 (Fed. Cir. Mar. 2, 2010).
New Federal Circuit Opinions - March 1, 2010
Starting on March 1, 2010, we will list all new precedential opinions issued by Federal Circuit. For more notable opinions, we will provide our case comments.
Media Techs. Licensing LLC v. Upper Deck Co., No. 2009-1022 (Fed. Cir. Mar. 1, 2010).
Comaper Corp. v. Antec, Inc., Nos. 2009-1248, -1249 (Fed. Cir. Mar. 1, 2010).
Media Techs. Licensing LLC v. Upper Deck Co., No. 2009-1022 (Fed. Cir. Mar. 1, 2010).
Comaper Corp. v. Antec, Inc., Nos. 2009-1248, -1249 (Fed. Cir. Mar. 1, 2010).
Thursday, February 25, 2010
Willful Infringement: Prompt Redesign Efforts and Complete Removal of Infringing products Suggest No Objective Recklessness
Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 2008-1392, -1393, -1422 (Fed. Cir. Feb. 25, 2010)
Holding:
Prompt redesign efforts and complete removal of infringing products in a span of a few months after the lawsuit commenced suggest that the infringer was not objectively reckless. Slip op. at 24-25.
Relevant Facts:
Trading Technologies (TT) owns U.S. Patent No. 6,772,132 and U.S. Patent No. 6,766,304, directed to a static display of prices in commodity trading. After TT sued eSpeed for infringement, eSpeed redesigned its products. The trial court found that the asserted patents were valid, enforceable, and infringed by eSpeed’s old product infringed, but not willfully, and not infringed by eSpeed’s redesigned products.
.
Comments:
This case involves so many issues including standard claim construction disputes. The notable issues include the willful infringement analysis.
The Federal Circuit pointed out that in In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc), it held that “proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness” and that the patentee must also show that “the infringer knew or should have known of this objectively high likelihood.” Slip op. at 24. Here, the Federal Circuit held that prompt redesign efforts and complete removal of infringing products suggest no objective recklessness and thus no willful infringement.
eSpeed’s prompt redesign of the products after being sued is an excellent practice that makes perfect business sense. An accused infringer, no matter how confident it is, should always hedge its bet and anticipate the potential adverse ruling. One way to do so is, if possible, to redesign the accused products. In this case, even though eSpeed lost the lawsuit, but it is actually the winner business-wise, because the outcome of this lawsuit does not negatively affect its current products and business.
Holding:
Prompt redesign efforts and complete removal of infringing products in a span of a few months after the lawsuit commenced suggest that the infringer was not objectively reckless. Slip op. at 24-25.
Relevant Facts:
Trading Technologies (TT) owns U.S. Patent No. 6,772,132 and U.S. Patent No. 6,766,304, directed to a static display of prices in commodity trading. After TT sued eSpeed for infringement, eSpeed redesigned its products. The trial court found that the asserted patents were valid, enforceable, and infringed by eSpeed’s old product infringed, but not willfully, and not infringed by eSpeed’s redesigned products.
.
Comments:
This case involves so many issues including standard claim construction disputes. The notable issues include the willful infringement analysis.
The Federal Circuit pointed out that in In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc), it held that “proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness” and that the patentee must also show that “the infringer knew or should have known of this objectively high likelihood.” Slip op. at 24. Here, the Federal Circuit held that prompt redesign efforts and complete removal of infringing products suggest no objective recklessness and thus no willful infringement.
eSpeed’s prompt redesign of the products after being sued is an excellent practice that makes perfect business sense. An accused infringer, no matter how confident it is, should always hedge its bet and anticipate the potential adverse ruling. One way to do so is, if possible, to redesign the accused products. In this case, even though eSpeed lost the lawsuit, but it is actually the winner business-wise, because the outcome of this lawsuit does not negatively affect its current products and business.
Infringing a Design Patent?: The Proper Comparison Requires a Side-By-Side View of the Drawings of the Patent Design and the Accused Products
Crocs, Inc. v. Int'l Trade Comm'n, No. 2008-1596 (Fed. Cir. Feb. 24, 2010)
Holding:
For the infringement analysis of a design patent, the “ordinary observer” test must be applied to the design as a whole, and the proper comparison requires a side-by-side view of the drawings of the patent design and the accused products. Slip op. at 12.
Relevant Facts:
Crocs is the assignee of U.S. Patent No. 6,993,858 and D517,789. Slip op. at 2. Crocs sued a number of foam footwear companies before the United States International Trade Commission. Id. at 5-6. The Commission found that the “’858 patent” was obvious and the ’789 patent was not infringed. The Commission also determined that Crocs had not satisfied the technical prong of the industry requirement under Section 337 for the ’789 patent. The Federal Circuit reversed the Commission’s decisions. Id. at 2.
Comments:
In this case, the Federal Court clarified the application of the “ordinary observer” test in the infringement analysis of the design patent, requiring a side-by-side comparison of the drawings of the patent design and the accused products.
While it is relatively easy to compare the designs in this case, one may imagine the situations where the side-by-side comparison may not be self-evident. In other words, while the side-by-side comparison is a clean concept in theory, it may not be practical in certain situations.
Therefore, the Federal Circuit may have to issue further clarification in the future regarding the “ordinary observer” test from Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc).
Holding:
For the infringement analysis of a design patent, the “ordinary observer” test must be applied to the design as a whole, and the proper comparison requires a side-by-side view of the drawings of the patent design and the accused products. Slip op. at 12.
Relevant Facts:
Crocs is the assignee of U.S. Patent No. 6,993,858 and D517,789. Slip op. at 2. Crocs sued a number of foam footwear companies before the United States International Trade Commission. Id. at 5-6. The Commission found that the “’858 patent” was obvious and the ’789 patent was not infringed. The Commission also determined that Crocs had not satisfied the technical prong of the industry requirement under Section 337 for the ’789 patent. The Federal Circuit reversed the Commission’s decisions. Id. at 2.
Comments:
In this case, the Federal Court clarified the application of the “ordinary observer” test in the infringement analysis of the design patent, requiring a side-by-side comparison of the drawings of the patent design and the accused products.
While it is relatively easy to compare the designs in this case, one may imagine the situations where the side-by-side comparison may not be self-evident. In other words, while the side-by-side comparison is a clean concept in theory, it may not be practical in certain situations.
Therefore, the Federal Circuit may have to issue further clarification in the future regarding the “ordinary observer” test from Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc).
Monday, February 15, 2010
Taiwan's Industrial Technology Research Institute Dismissed Lawsuits Against Samsung in the U.S.
For earlier post on this topic, please click here.
Timeline:
(1) On June 19, 2009, Taiwan's Industrial Technology Research Institute (“ITRI”) filed two patent infringement lawsuits against Samsung Electronics America Inc. and two other Samsung entities in the U.S. District Court for the Western District of Arkansas (Case Nos. 4:09-cv-04063, 4:09-cv-04064). ITRI accused that Samsung's cell phone i607 and D520 models infringed U.S. Patent Number 6,459,413.
(2) On October 19, 2009, ITRI filed another lawsuit in the same district (Case No. 4:09-cv-04110), asserting 13 patents against Samsung with respect to Samsung's various flat panel display products including laptops, netbooks, cellphones, video projectors, and cameras.
(3) On January 15, 2010, ITRI filed a stipulation to dismiss each of the above cases without prejudice.
While the first two cases were pending, Samsung moved to transfer venue to the Eastern District of Texas – the home of a Samsung entity. The parties subsequently moved for the court to stay the litigation for 60 days pending settlement discussions.
The stipulation to dismiss each of the above cases without prejudice filed on January 15, 2010 indicates that the parties might have agreed to continue their settlement discussions out of court.
It remains to be seen, however, whether ITRI will re-file the lawsuits. If ITRI reaches a favorable settlement with Samsung, we could see a new wave of patent litigations filed by patent holding companies in the greater China region.
Timeline:
(1) On June 19, 2009, Taiwan's Industrial Technology Research Institute (“ITRI”) filed two patent infringement lawsuits against Samsung Electronics America Inc. and two other Samsung entities in the U.S. District Court for the Western District of Arkansas (Case Nos. 4:09-cv-04063, 4:09-cv-04064). ITRI accused that Samsung's cell phone i607 and D520 models infringed U.S. Patent Number 6,459,413.
(2) On October 19, 2009, ITRI filed another lawsuit in the same district (Case No. 4:09-cv-04110), asserting 13 patents against Samsung with respect to Samsung's various flat panel display products including laptops, netbooks, cellphones, video projectors, and cameras.
(3) On January 15, 2010, ITRI filed a stipulation to dismiss each of the above cases without prejudice.
While the first two cases were pending, Samsung moved to transfer venue to the Eastern District of Texas – the home of a Samsung entity. The parties subsequently moved for the court to stay the litigation for 60 days pending settlement discussions.
The stipulation to dismiss each of the above cases without prejudice filed on January 15, 2010 indicates that the parties might have agreed to continue their settlement discussions out of court.
It remains to be seen, however, whether ITRI will re-file the lawsuits. If ITRI reaches a favorable settlement with Samsung, we could see a new wave of patent litigations filed by patent holding companies in the greater China region.
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