According to a Vizio press release on October 28, 2009, Vizio has licensed its digital TV patent portfolio to Sony, thereby resolving ongoing patent disputes with SONY. Vizio also becomes a licensee under Sony's digital television patent portfolio.
Note that Vizio acquired the digital TV patents at issue from Motorola, and Motorola acquired the same patents from General Instrument Corp.
Thursday, October 29, 2009
Wednesday, October 28, 2009
Mei & Mark LLP Files an Appeal Brief in the Federal Circuit on Behalf of an Appellant in General Protecht Group v. ITC.
The Intellectual Property & Litigation law firm Mei & Mark LLP today filed an appeal brief in the United States Court of Appeals for the Federal Circuit on behalf of Appellant Wenzhou Trimone Science and Technology Electric Co., Ltd., in General Protecht Group v. ITC, Case Nos. 2009-1378, -1387, -1434. The case is on appeal from the United States International Trade Commission in Investigation No. 337-TA-615. The client retained Mei & Mark LLP for post-ITC proceedings, including appeals, after it lost at the Commission. A copy of the brief (excluding the addendum) is available for download.
Mei & Mark LLP's appellate team consists of registered patent attorneys who possess both exceptional academic credentials in law, science, and technology, and a rare combination of patent law experience covering patent prosecution, licensing, and litigation. The brief is authored by Mr. Lei Mei, a magna cum laude graduate of Duke Law School, where he was elected to the Order of the Coif, and Mr. Reece Nienstadt, a Stanford graduate who holds a J.D. degree, cum laude, from Georgetown University Law Center.
About Mei & Mark LLP
Mei & Mark LLP provides clients high quality legal services in a flexible, cost-effective manner, focusing on the full range of IP practice including Patent Prosecution, IP Licensing, and Litigation. Our attorneys possess exceptional credentials and have substantial legal and industrial experience. Mei & Mark LLP is a minority-owned law firm based in Washington, DC. For more information, visit www.meimark.com.
Mei & Mark LLP's appellate team consists of registered patent attorneys who possess both exceptional academic credentials in law, science, and technology, and a rare combination of patent law experience covering patent prosecution, licensing, and litigation. The brief is authored by Mr. Lei Mei, a magna cum laude graduate of Duke Law School, where he was elected to the Order of the Coif, and Mr. Reece Nienstadt, a Stanford graduate who holds a J.D. degree, cum laude, from Georgetown University Law Center.
About Mei & Mark LLP
Mei & Mark LLP provides clients high quality legal services in a flexible, cost-effective manner, focusing on the full range of IP practice including Patent Prosecution, IP Licensing, and Litigation. Our attorneys possess exceptional credentials and have substantial legal and industrial experience. Mei & Mark LLP is a minority-owned law firm based in Washington, DC. For more information, visit www.meimark.com.
Wednesday, October 7, 2009
DTV Patent War Watch (7)
On October 6, 2009, the United States Court of International Trade ("CIT") issued an opinion dismissing Funai's complaint of the US Customs' earlier rulings that the limited exclusion order issued by the United States International Trade Commission ("ITC") in Inv. No. 337-TA-617 does not cover the redesigned DTV products of Vizio and other companies. Funai Elec. Co. v. United States, No. 09-00374, slip op. at 14 (Ct. Int'l Trade Oct. 6, 2009).
Notably, the CIT held that it does not have subject-matter jurisdiction under 28 U.S.C. §1581(h) & (i) for "a party plaintiff in Funai’s current circumstance." Slip op. at 11-13.
28 U.S.C. §1581(h) is reproduced below:
(h) The Court of International Trade shall have exclusive jurisdiction of any civil action commenced to review, prior to the importation of the goods involved, a ruling issued by the Secretary of the Treasury, or a refusal to issue or change such a ruling, relating to classification, valuation, rate of duty, marking, restricted merchandise, entry requirements, drawbacks, vessel repairs, or similar matters, but only if the party commencing the civil action demonstrates to the court that he would be irreparably harmed unless given an opportunity to obtain judicial review prior to such importation.
It appears that because Funai, as a patentee and ITC complainant, cannot invoke subject matter jurisdiction at the CIT, because it is not the importer who requested the US Customs' ruling, and thus cannot demonstrate that it "would be irreparably harmed unless given an opportunity to obtain judicial review prior to such importation." 28 U.S.C. §1581(h) (2006).
Note that Funai also brought an enforcement proceeding before the ITC, so it appears that the ITC should be the more appropriate forum for this dispute.
Notably, the CIT held that it does not have subject-matter jurisdiction under 28 U.S.C. §1581(h) & (i) for "a party plaintiff in Funai’s current circumstance." Slip op. at 11-13.
28 U.S.C. §1581(h) is reproduced below:
(h) The Court of International Trade shall have exclusive jurisdiction of any civil action commenced to review, prior to the importation of the goods involved, a ruling issued by the Secretary of the Treasury, or a refusal to issue or change such a ruling, relating to classification, valuation, rate of duty, marking, restricted merchandise, entry requirements, drawbacks, vessel repairs, or similar matters, but only if the party commencing the civil action demonstrates to the court that he would be irreparably harmed unless given an opportunity to obtain judicial review prior to such importation.
It appears that because Funai, as a patentee and ITC complainant, cannot invoke subject matter jurisdiction at the CIT, because it is not the importer who requested the US Customs' ruling, and thus cannot demonstrate that it "would be irreparably harmed unless given an opportunity to obtain judicial review prior to such importation." 28 U.S.C. §1581(h) (2006).
Note that Funai also brought an enforcement proceeding before the ITC, so it appears that the ITC should be the more appropriate forum for this dispute.
Wednesday, September 23, 2009
US Copyright Office Registration Does Not Qualify As a “Printed Publication” under § 102
In re Lister, No. 2009-1060 (Fed. Cir. Sept. 22, 2009):
Holding:
US Copyright Office’s automated catalog alone is insufficient to support a finding of public accessibility due to an inadequate index, because the automated catalog is not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work. Slip op. at 12-13.
Facts:
The inventor filed a copyright registration more than one year before filing a patent application. The PTO rejected the patent application under § 102 based on the submitted manuscript for the copyright registration. However, US Copyright Office’s automated catalog was not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work. Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases. Users of the Westlaw and Dialog databases could perform keyword searches of the titles, but not the full texts, of the works.
Comments:
This case makes clear that because US Copyright Office’s automated catalog is not adequately indexed to qualify as a “Printed Publication” under § 102. However, because Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases, and allow users to perform keyword searches of the titles, Westlaw and Dialog databases may qualify as a “Printed Publication” under § 102. In this case, however, the PTO did not prove when the reference became available in the Westlaw and Dialog databases, and therefore cannot prove that the reference is a § 102 reference.
Holding:
US Copyright Office’s automated catalog alone is insufficient to support a finding of public accessibility due to an inadequate index, because the automated catalog is not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work. Slip op. at 12-13.
Facts:
The inventor filed a copyright registration more than one year before filing a patent application. The PTO rejected the patent application under § 102 based on the submitted manuscript for the copyright registration. However, US Copyright Office’s automated catalog was not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work. Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases. Users of the Westlaw and Dialog databases could perform keyword searches of the titles, but not the full texts, of the works.
Comments:
This case makes clear that because US Copyright Office’s automated catalog is not adequately indexed to qualify as a “Printed Publication” under § 102. However, because Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases, and allow users to perform keyword searches of the titles, Westlaw and Dialog databases may qualify as a “Printed Publication” under § 102. In this case, however, the PTO did not prove when the reference became available in the Westlaw and Dialog databases, and therefore cannot prove that the reference is a § 102 reference.
Friday, September 18, 2009
Standing to Sue: When Must an Exclusive Licensee Join the Patentee?
AsymmetRx, Inc. v. Biocare Med., LLC, No. 2009-1094 (Fed. Cir. Sept. 18, 2009):
Holding:
When a patentee retains substantial control over the patent rights it was exclusively licensing such that it did not convey all substantial rights under the patents, it did not make the license tantamount to an assignment, and the exclusive licensee must therefore be considered a licensee, not an assignee, and thus cannot sue for patent infringement without joining the patentee. Slip op. at 12.
Relevant Facts:
The AsymmetRx License effected a broad conveyance of rights to AsymmetRx by Harvard, but Harvard retained substantial interests under the patents, including that (1) if AsymmetRx elects not to exercise its right to sue, Harvard has the right to bring its own infringement action, (2) Harvard retained the right to make, use, and license the invention for academic research purposes, (3) Harvard retained a great deal of control over aspects of the licensed products within the commercial diagnostic field, and (4) AsymmetRx was required to grant sublicenses suggested by Harvard.
Comments:
It is well settled that whether an exclusive licensee has the standing to sue on its own (i.e., without joining the patentee) depends on whether the transfer of a particular right or interest constitutes an assignment or license. Of course, “whether a transfer of a particular right or interest was an assignment or license did not depend on the name applied to it, but on the intention of the parties as revealed by the record.” Slip op. at 7.
Determining whether the transfer of a particular right or interest constitutes an assignment or license, however, is fact intensive and can be complicated.
The cases whether the courts have found the standing to sue:
Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875 (Fed. Cir. 1991): Here, the right to sue was granted in its entirety, subject only to the obligation to inform the patent owner of the existence of the suit. The only rights under the patent that the patent owner retained were a veto right on sublicensing, the right to obtain patents on the invention in other countries, a reversionary right in the patent in the event of bankruptcy, and a right to receive infringement damages.
Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1251 (Fed. Cir. 2000): The license grant was not subject to any prior-granted licenses or to any retained rights by the licensor to practice the patent. It did not grant the original patent owners “the right to participate in an infringement action brought by [the licensee], nor [did] it limit [the licensee’s] management of any action.” In addition, the Federal Circuit found that a clause allowing the patent owners to bring their own infringement action if the licensee failed to do so within three months was an “illusory” retention of the right to sue because the licensee could “render that right nugatory by granting the alleged infringer a royalty-free sublicense.”
The cases whether the courts have found no standing to sue:
Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1132 (Fed. Cir. 1995): The Federal Circuit found that the patent owner had retained too great an interest in the patents to enable the licensee to sue for infringement on its own. Those interests included “a limited right to make, use, and sell products embodying the patented inventions, a right to bring suit if [the licensee] declined to do so, and the right to prevent [the licensee] from assigning its rights under the license to any party other than a successor in business.” The agreement also stated that if the patent owner asked the licensee to bring suit against an alleged infringer and the licensee declined to do so, the patent owner had the right to bring its own infringement action. In addition, even if the licensee did exercise its option to sue for infringement, it was obligated under the agreement not to “prejudice or impair the patent rights in connection with such prosecution or settlement.”
Key Question?
Is your case more similar to Abbott or to Vaupel or Speedplay in terms of what rights the patentee retained under the patents?
In addition, as a practical note, if the exclusive licensee does not have the standing to sue on its own, it should try to join the patentee. However, if the patentee, being within the jurisdiction, refuses or is unable to join an exclusive licensee as co-plaintiff, the licensee may make it a party defendant by process and it will be lined up by the court in the party character which he should assume. Slip op. at 8.
Holding:
When a patentee retains substantial control over the patent rights it was exclusively licensing such that it did not convey all substantial rights under the patents, it did not make the license tantamount to an assignment, and the exclusive licensee must therefore be considered a licensee, not an assignee, and thus cannot sue for patent infringement without joining the patentee. Slip op. at 12.
Relevant Facts:
The AsymmetRx License effected a broad conveyance of rights to AsymmetRx by Harvard, but Harvard retained substantial interests under the patents, including that (1) if AsymmetRx elects not to exercise its right to sue, Harvard has the right to bring its own infringement action, (2) Harvard retained the right to make, use, and license the invention for academic research purposes, (3) Harvard retained a great deal of control over aspects of the licensed products within the commercial diagnostic field, and (4) AsymmetRx was required to grant sublicenses suggested by Harvard.
Comments:
It is well settled that whether an exclusive licensee has the standing to sue on its own (i.e., without joining the patentee) depends on whether the transfer of a particular right or interest constitutes an assignment or license. Of course, “whether a transfer of a particular right or interest was an assignment or license did not depend on the name applied to it, but on the intention of the parties as revealed by the record.” Slip op. at 7.
Determining whether the transfer of a particular right or interest constitutes an assignment or license, however, is fact intensive and can be complicated.
The cases whether the courts have found the standing to sue:
Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875 (Fed. Cir. 1991): Here, the right to sue was granted in its entirety, subject only to the obligation to inform the patent owner of the existence of the suit. The only rights under the patent that the patent owner retained were a veto right on sublicensing, the right to obtain patents on the invention in other countries, a reversionary right in the patent in the event of bankruptcy, and a right to receive infringement damages.
Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1251 (Fed. Cir. 2000): The license grant was not subject to any prior-granted licenses or to any retained rights by the licensor to practice the patent. It did not grant the original patent owners “the right to participate in an infringement action brought by [the licensee], nor [did] it limit [the licensee’s] management of any action.” In addition, the Federal Circuit found that a clause allowing the patent owners to bring their own infringement action if the licensee failed to do so within three months was an “illusory” retention of the right to sue because the licensee could “render that right nugatory by granting the alleged infringer a royalty-free sublicense.”
The cases whether the courts have found no standing to sue:
Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1132 (Fed. Cir. 1995): The Federal Circuit found that the patent owner had retained too great an interest in the patents to enable the licensee to sue for infringement on its own. Those interests included “a limited right to make, use, and sell products embodying the patented inventions, a right to bring suit if [the licensee] declined to do so, and the right to prevent [the licensee] from assigning its rights under the license to any party other than a successor in business.” The agreement also stated that if the patent owner asked the licensee to bring suit against an alleged infringer and the licensee declined to do so, the patent owner had the right to bring its own infringement action. In addition, even if the licensee did exercise its option to sue for infringement, it was obligated under the agreement not to “prejudice or impair the patent rights in connection with such prosecution or settlement.”
Key Question?
Is your case more similar to Abbott or to Vaupel or Speedplay in terms of what rights the patentee retained under the patents?
In addition, as a practical note, if the exclusive licensee does not have the standing to sue on its own, it should try to join the patentee. However, if the patentee, being within the jurisdiction, refuses or is unable to join an exclusive licensee as co-plaintiff, the licensee may make it a party defendant by process and it will be lined up by the court in the party character which he should assume. Slip op. at 8.
Wednesday, September 16, 2009
Double Patenting: The § 121 Safe Harbor Protects Patents Descending from Divisional Applications, but not from Continuation Applications Exclusively
Amgen Inc. v. F. Hoffmann-La Roche Ltd, Nos. 2009-1020, -1096 (Fed. Cir. Sept. 15, 2009):
In the 80-page decision, the Court addressed many issues. Instead of covering the entire opinion, we choose to focus on a couple of notable holdings.
Notable Holdings:
The 35 U.S.C. § 121 safe harbor protects patents descending from divisional applications, but not from continuation applications exclusively. Slip op. at 18.
An accused infringer cannot show patentable indistinctiveness by relying on evidence up to the filing date of the secondary application; rather, it must rely on evidence up to the filing date of the first application because of the priority claim under 35 U.S.C. § 120. Slip op. at 23.
Comments:
Section 121, entitled “Divisional applications,” provides in its third sentence:
+++
A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.
+++
35 U.S.C. § 121.
The Court’s holding that the § 121 safe harbor does not protect patents descending from continuation applications exclusively is consistent with its earlier decisions that § 121 protects patents which issued directly from continuation applications that descended from divisional applications that were filed as a result of restriction requirements. Slip op. at 18.
***
Regarding patentable indistinctiveness, the Court rejected Roche’s interpretation of Takeda Pharmaceutical Co. v. Doll, 561 F.3d 1372 (Fed. Cir. 2009), that both the patentee and the accused infringer can show patentable indistinctiveness by relying on evidence up to the filing date of the secondary application. Because of 35 U.S.C. § 120, the Court held that only the patentee may do so, but not the accused infringer.
However, if the patentee pursues that course, the accused infringer will be free to rely on subsequent developments in the art up to the filing dates of the second application to prove that any alternative processes put forth by the patentee do not render the claims of both applications patentably distinct. Slip op. at 25.
In the 80-page decision, the Court addressed many issues. Instead of covering the entire opinion, we choose to focus on a couple of notable holdings.
Notable Holdings:
The 35 U.S.C. § 121 safe harbor protects patents descending from divisional applications, but not from continuation applications exclusively. Slip op. at 18.
An accused infringer cannot show patentable indistinctiveness by relying on evidence up to the filing date of the secondary application; rather, it must rely on evidence up to the filing date of the first application because of the priority claim under 35 U.S.C. § 120. Slip op. at 23.
Comments:
Section 121, entitled “Divisional applications,” provides in its third sentence:
+++
A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.
+++
35 U.S.C. § 121.
The Court’s holding that the § 121 safe harbor does not protect patents descending from continuation applications exclusively is consistent with its earlier decisions that § 121 protects patents which issued directly from continuation applications that descended from divisional applications that were filed as a result of restriction requirements. Slip op. at 18.
***
Regarding patentable indistinctiveness, the Court rejected Roche’s interpretation of Takeda Pharmaceutical Co. v. Doll, 561 F.3d 1372 (Fed. Cir. 2009), that both the patentee and the accused infringer can show patentable indistinctiveness by relying on evidence up to the filing date of the secondary application. Because of 35 U.S.C. § 120, the Court held that only the patentee may do so, but not the accused infringer.
However, if the patentee pursues that course, the accused infringer will be free to rely on subsequent developments in the art up to the filing dates of the second application to prove that any alternative processes put forth by the patentee do not render the claims of both applications patentably distinct. Slip op. at 25.
Sunday, September 13, 2009
All-In-One: Direct Infringement, Contributory Infringement, and Damages
Lucent Techs., Inc. v. Gateway, Inc., Nos. 2008-1485, -1487, -1495 (Fed. Cir. Sept. 11, 2009):
Holdings:
Direct infringement may be found based on circumstantial evidence. Slip op. at 20-21.
To prove contributory infringement, a patentee may focus the “substantial noninfringing use” inquiry under 35 U.S.C. § 271(c) on the specific infringing feature or component rather than the entire product. Id. at 26-27.
A lump-sum royalty agreement may, during the license negotiation, consider the expected or estimated usage or production of a given invention. Id. at 38.
For a jury to use a running-royalty agreement as a basis to award lump-sum damages, some basis for comparison must exist in the evidence presented to the jury. Id. at 43.
Relevant Facts:
Lucent asserted U.S. Patent No. 4,763,356, which is generally directed to a method of entering information into fields on a computer screen without using a keyboard, against Microsoft. The jury returned a verdict that the patent is not invalid and infringed by Microsoft, and awarded more than $357 million to Lucent. Microsoft appealed, and the Court affirmed the validity and infringement findings, but vacated and remanded the damage award to the district court for further proceedings.
Comments:
Regarding the point that direct infringement may be found based on circumstantial evidence, the Court distinguished other cases on the basis that the patentees in these other cases failed to present any circumstantial evidence while Lucent noted that “Microsoft not only designed the accused products to practice the claimed invention, but also instructed its customers to use the accused products in an infringing way.” Slip op. at 21.
It is still desirable, however, to present at least one instance of infringing activities. Relying on circumstantial evidence should only be the last resort.
Regarding contributory infringement, the Court again rejected the argument that an otherwise infringing product may automatically escape liability merely because it contains a noninfringing staple ingredient. Id. at 26.
Regarding damages, the Court illustrated the difficulties in applying the Georgia-Pacific factors. Really, there is no easy way to calculate the damages, but any reasonable calculation must be legally sound and logical in order to be upheld on appeal.
Holdings:
Direct infringement may be found based on circumstantial evidence. Slip op. at 20-21.
To prove contributory infringement, a patentee may focus the “substantial noninfringing use” inquiry under 35 U.S.C. § 271(c) on the specific infringing feature or component rather than the entire product. Id. at 26-27.
A lump-sum royalty agreement may, during the license negotiation, consider the expected or estimated usage or production of a given invention. Id. at 38.
For a jury to use a running-royalty agreement as a basis to award lump-sum damages, some basis for comparison must exist in the evidence presented to the jury. Id. at 43.
Relevant Facts:
Lucent asserted U.S. Patent No. 4,763,356, which is generally directed to a method of entering information into fields on a computer screen without using a keyboard, against Microsoft. The jury returned a verdict that the patent is not invalid and infringed by Microsoft, and awarded more than $357 million to Lucent. Microsoft appealed, and the Court affirmed the validity and infringement findings, but vacated and remanded the damage award to the district court for further proceedings.
Comments:
Regarding the point that direct infringement may be found based on circumstantial evidence, the Court distinguished other cases on the basis that the patentees in these other cases failed to present any circumstantial evidence while Lucent noted that “Microsoft not only designed the accused products to practice the claimed invention, but also instructed its customers to use the accused products in an infringing way.” Slip op. at 21.
It is still desirable, however, to present at least one instance of infringing activities. Relying on circumstantial evidence should only be the last resort.
Regarding contributory infringement, the Court again rejected the argument that an otherwise infringing product may automatically escape liability merely because it contains a noninfringing staple ingredient. Id. at 26.
Regarding damages, the Court illustrated the difficulties in applying the Georgia-Pacific factors. Really, there is no easy way to calculate the damages, but any reasonable calculation must be legally sound and logical in order to be upheld on appeal.
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