Trademark Infringement and Jury Trials in Federal Courts

By Cory Barnes on April 6, 2021 Posted in Trademark

When plaintiffs assert trademark infringement and related actions under the Lanham Act (or state law counterparts), more often than not the complaint will include a demand for a jury trial on all issues so triable, as is standard practice. However, if discovery ultimately reveals, or dispositive motion practice confirms, that a plaintiff has suffered no actual, compensatory damages, but rather is only able to seek “damages” in the form of an injunction or a defendant’s allegedly ill-gotten profits (disgorgement), then a defending party may have a strong argument that the plaintiff’s claims carry no right to a jury trial under the Seventh Amendment. The goal of this post is therefore to quickly remind litigants (and their counsel) of the critical relationship between the types of damages sought and their impact on who ultimately will decide the case – judge or jury. Continue Reading

The US Supreme Court Decides Oracle v. Google—The More Things Change, the More They Stay the Same

By Chad Rutkowski and Theresa Weisenberger on April 5, 2021 Posted in Copyright Infringement

The U.S. Supreme Court issued a remarkable opinion in the long-running dispute between Oracle America and Google over Google’s copying of Oracle’s Java SE API for use on the Android platform. BakerHostetler has followed this case for quite some time, and our prior blog posts providing extensive background can be found here, here and here.

The opinion is remarkable both for what it did and did not decide. The Court overruled the Federal Circuit’s decision to reject a jury’s determination of fair use, and found that Google’s copying of a specific portion of the Java API, its declaring code, was a fair use as a matter of law. In doing so, the Court upheld the Federal Circuit and ruled that although fair use is a mixed question of law and fact, application of the law to facts was for judges to decide de novo. The Court then proceeded to independently analyze each fair use factor and overturned the Federal Circuit’s fair use conclusion, finding that all four fair use factors favored Google. In doing so, the Court arguably expanded the scope of the “transformative use” analysis under the first fair use factor, finding that context shifting (here, using a computer program on a smartphone platform instead of a desktop platform) is sufficient to satisfy the transformative use requirement. Continue Reading

Can a Plaintiff in the United States Recover Foreign Patent Damages?

By Michael Gannon on April 5, 2021 Posted in Patent

In 2018, the U.S. Supreme Court held that a plaintiff was entitled to lost foreign profits under 35 U.S.C. § 284 based on direct acts of infringement in the United States under 35 U.S.C. § 271(f)(2). WesternGeco LLC v. ION Geophysical Corp., 138 S.Ct. 2129 (2018) (WesternGeco). The question is: Did WesternGeco effectively overrule the Federal Circuit’s decision in Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013) (Power CAFC), which held that a patent owner cannot recover foreign lost profit damages for direct infringement under Section 271(a), even if the direct infringement occurred in the United States? Continue Reading

2020 Patent Litigation: Year in Review

By Derek Freitas on March 24, 2021 Posted in Patent

2020 was a year of turmoil and unexpected events. While many businesses struggled throughout the year, patent litigation experienced an uptick across the board. According to Docket Navigator, 2020 was the first year to see an increase in the total annual number of patent cases since 2015.[1] Compared to 2018 and 2019, this past year had approximately 400 more new patent litigation proceedings in district courts. There was also an increase in the number of parties involved in new patent cases, with a net gain of roughly 4,000 parties. Similarly, courts saw a net increase of approximately 3,000 patent accusations from 2019 to 2020.

In terms of new district court filings, there was a 12 percent total increase. The distribution between district courts also changed. Patent cases filed with the district courts handling the most patent cases saw a roughly 30 percent yearly increase since 2018. There has been, however, a shift from the U.S. District Court for the District of Delaware to the U.S. District Court for the Western District of Texas in terms of most patent cases filed per year. The Western District of Texas saw a 199 percent increase in proceedings from 2019 to 2020. Notably, with the significant increase in caseloads, some of the busiest patent courts have managed to maintain timelines similar to what they had in years past, with the exception of the Central District of California. Continue Reading

Answering Intellectual Property Questions From IP-Inexperienced Businesspersons

By Kevin Flynn on March 23, 2021 Posted in Intellectual Property

I recently reached out to a few clients, friends and former colleagues — all of whom are “IP-inexperienced” — to ask them what intellectual property (IP) answers they might find helpful during their workdays, no matter how basic the question might seem. Each person has a job that is not focused on IP matters but occasionally has IP issues arise. For this post, I selected one question each from the CEO of a software startup, a transactional in-house attorney and a project manager at an engineering consulting firm.

“How do we navigate the patent process? How do you decide whether or not to file for a patent, and is filing for a patent worthwhile?”

Perhaps with some exceptions (such as large, multinational corporations with established research and development (R&D) departments), companies have a wide variety of approaches to navigating the patent process, depending on the size of the company, how often the company is involved in the patent process, whether or not the company has an in-house legal team, and personal preferences among those responsible for patent decision-making. Continue Reading

Blacklist Complaints: A Novel Tool Against Bad-Faith Trademark Applicants in China

By Lesley Grossberg and Deborah A. Wilcox on March 18, 2021 Posted in Trademark

Bad-faith trademark filings can pose a painful obstacle to brand owners’ attempts to register and enforce trademark rights in China. Traditionally, trademark owners have needed to file a broad range of defensive applications, oppose dozens of bad-faith filings as they are published, and/or undertake massive invalidation campaigns against existing bad-faith registrations. These actions are resource-intensive but necessary to keep the Chinese trademark register clear of bad-faith filers.

Importantly, a new process is available to assist rights owners. The China National Intellectual Property Administration (CNIPA) has recently made available a “blacklist complaint” procedure. Rights owners identify bad-faith filers, and the Chinese trademark office will more closely scrutinize suspect applications and registrations at each of the examination, opposition and appeal stages of the trademark life cycle. This is an informal process, not expressly authorized by the Chinese trademark law and yet a powerful tool by which rights owners can inexpensively and effectively flag infringers’ trademark filings for closer review. Continue Reading

For a Few Facts More

By Scott Feldmann on March 16, 2021 Posted in Patents

After TC Heartland tightened up patent venue, Judge Albright’s local patent rules drew plaintiffs wanting a quick courtroom shootout. According to Lex Machina and IP Law360, Judge Albright, by himself, picked up 793 patent litigations last year in the Western District of Texas (WDTex). In just a year, Judge Albright accumulated 20 percent of newly-filed patent litigations nationwide. A recent case shows, though, that not every plaintiff who wants to litigate in West Texas is entitled to stay there. Pleading key venue facts “on information and belief” will weaken an attempt to hold venue. Bootstrapping via pendent non-patent claims is also insufficient. Defendants who apply exacting TC Heartland analysis can prevail, and get a case dismissed outright for improper venue.

Plaintiff Akurate Dynamics LLC (Akurate) alleged, on information and belief, that defendant Carlisle Fluid Technologies, Inc. (Carlisle) infringed Akurate’s patent by conducting a product demonstration within WDTex. Akurate alleged not only patent infringement, but also breach of federal and Texas trade secrets statutes, plus breach of contract arising out of a nondisclosure agreement. The technology involved “spraying machines.” Continue Reading

Use of Infringement Disclaimer to Preserve Favorable PTAB Decision

By Mark Einsiedel on March 4, 2021 Posted in Patents

In a recent precedential opinion, ABS Global Inc. v. Cytonome/ST, LLC, 984 F.3d 1017 (Fed. Cir. 2021), the Federal Circuit held that the disclaimer of a right to appeal a district court’s summary judgment of non-infringement mooted a petitioner’s appeal of the Patent Trial and Appeal Board’s (PTAB) final written decision in an inter partes review (IPR) proceeding.

In 2017, Cytonome sued ABS alleging infringement of Cytonome’s ‘161 Patent. Several months later, ABS filed a petition for inter partes review of all claims of the ‘161 Patent. After instituting review, the PTAB issued a final written decision invalidating some, but notably not all, claims of the ‘161 Patent. Thereafter, in the district court litigation, the court granted ABS’s motion for summary judgment of non-infringement of the ‘161 Patent. About two months later, ABS appealed the PTAB’s final written decision and filed its opening brief in support thereof. Next, Cytonome filed a response brief, which included an affidavit from Cytonome’s counsel that Cytonome “has elected not to pursue an appeal of the district court’s finding of non-infringement as to the ‘161 patent and hereby disclaims such an appeal.” The issue before the Federal Circuit, as raised by Cytonome in its response brief, was whether its disclaimer of its right to appeal the district court’s summary judgment non-infringement ruling mooted ABS’s appeal of the PTAB’s final written decision. Continue Reading

Looking for Clarification on Means-Plus-Function Claiming? Here Are 4 Things You Should Know

By Phillip Wolfe on March 3, 2021 Posted in Software

In Rain Computing, Inc. v. Samsung Elecs. Co., No. 2020-1646 (Fed. Cir. Mar. 2, 2021), the Federal Circuit reversed a judgment of non-invalidity and in doing so provided clarity to its post-Williamson (792 F.3d 1339 (Fed. Cir. 2015)) means-plus-function case law and the required disclosure of structure to avoid an indefiniteness issue. This guidance is especially useful to patent owners and, in particular, those in the computer fields, as the decision addresses the claim term “module” in a § 112 ¶ 6 (now § 112(f)) analysis, and the accompanying disclosure of structure required when the function is performed by a general-purpose computer.

The claims at issue in Rain concerned “delivering software application packages to a client terminal in a network based on user demands configured to control access.” The district court determined one of the terms, “user identification module,” to be a means-plus-function term subject to § 112 ¶ 6 treatment but not indefinite. Based on the parties’ joint stipulation, the district court entered judgment that the asserted claims were neither infringed nor invalid for indefiniteness. On appeal, the Federal Circuit reversed the judgment as to invalidity for indefiniteness and dismissed the infringement issue as moot. In doing so, the court offered clarity on several key issues. Continue Reading

Does Your Patent Application Qualify for the PTAB’s Fast-Track Appeal Pilot Program?

By Tayan Patel on February 23, 2021 Posted in Patents

The USPTO recently launched the Fast-Track Appeal Pilot Program on July 2, 2020. The Pilot Program is slated to last one year, with a cap of 125 granted petitions per quarter – 500 total for the year. According to a Patent Trial and Appeal Board (PTAB) webinar hosted on Feb. 18, 2021, the PTAB may use discretion to grant additional petitions per quarter. The Pilot Program allows appellants, i.e., applicant of the patent application, to file a petition to request fast-track review of ex parte appeals.

To qualify, the patent application must be an original utility, design, or plant non-provisional application. In addition, (i) a notice of appeal must have been filed in the application, and (ii) a PTAB docketing notice was issued. In other words, a deficiency of either (i) or (ii) would result in the petition being denied. Further, the appellant must file a petition under 37 CFR 41.3 seeking fast-track review accompanied by a $420 non-refundable fee (37 CFR 41.20(a)). Importantly, the Pilot Program is not available for applications treated as special under MPEP §708.01, i.e., because of age or health of the inventor. Continue Reading