A party needs to be cognizant of the infringing instrumentalities it identifies in its infringement contentions and any subsequent amendments. In LMT Mercer Group, Inc. v. Maine Ornamental, LLC et al, No. 10-4615, 2014 U.S. Dist. LEXIS 5719 (D.N.J. Jan. 24, 2014), Judge Wolfson denied Plaintiff LMT Mercer Group’s (“LMT”) motion to amend its infringement contentions to add a product that it removed from its previous filings and then delayed in correcting that exclusion.
The United States Patent Trial and Appeal Board Determines That a Civil Action Dismissed Without Prejudice Does Not Bar a Petition for Inter Partes Review Under 35 U.S.C. § 315 (a)(1)
We previously reported on February 6, 2014, that the United States Patent Trial and Appeal Board (“PTAB”) determined that a “complaint alleging infringement of the patent” does not include arbitration proceedings for purposes of triggering the time bar under 35 U.S.C. § 315(b). This week, the PTAB also determined what constitutes a bar to filing an inter partes review petition under 35 U.S.C. § 315 (a)(1); specifically whether a civil action filed before a petition for an inter partes review that is subsequently dismissed without prejudice is a bar to the petition under 35 U.S.C. § 315 (a)(1). The PTAB held that it is not.
The United States Patent Trial and Appeal Board (“PTAB”) recently interpreted what constitutes a “trigger” under 35 U.S.C. § 315(b). The PTAB concluded that under the statute, a “complaint alleging infringement of the patent” does not include arbitration proceedings. Amkor Tech., Inc. (“Amkor”) and Tessera, Inc. (“Tessera”) executed a license agreement in 1996 (“Agreement”) under which Amkor had rights to use Tessera technology covered by U.S. Patent No. 6,046,076 (“the ‘076 patent”) in exchange for the payment of royalties. In 2009, a dispute arose regarding the payment of royalties under the Agreement. Amkor availed itself to the arbitration provision in the Agreement and initiated an arbitration proceeding seeking declaratory relief that it was fully compliant with the terms of the Agreement. In its answer to Amkor’s arbitration request, Tessera included counterclaims for patent infringement. In July 2012, the arbitration tribunal found that Amkor did fail to pay royalties on certain products covered by claims of the ‘076 patent.
Recently, in an effort to expedite patent prosecution internationally, thirteen countries, including the United States, have established a Global Patent Prosecution Highway (“GPPH”): Australia (IP), Canada (CIPO), Denmark (DKPTO), Finland (NBPR), Japan (JPO), Korea (KIPO), Nordic Patent Institute (NPI), Norwegian Patent Office (NIPO), Portugal (INPI), Russia (ROSPATENT), Spain (SPTO), United Kingdom (IPO), and USA (USPTO). Unfortunately, the European Patent Office has not signed on to the GPPH yet.
Like 2013, 2014 promises to be an exciting year for intellectual property law. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. As we reported, on December 6, 2013, the Supreme Court granted certiorari in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. et al., 13-298. The Alice case concerns the patentability of a computer software program used to facilitate financial transactions. Sitting en banc, the Federal Circuit split 5-5 to affirm the district court’s decision and found Alice’s patents ineligible for protection under 35 U.S.C. § 101, a fractured opinion that left lawyers and their clients uncertain about which types of software patents are patentable.
Last week, Senate Judiciary Chairman Orrin Hatch (D. UT) introduced the Patent Litigation Integrity Act, S. 1612. The Senate bill follows the introduction of a bill proposed by House Judiciary Committee Chairman Bob Goodlatte (R. VA), H.R. 3309, entitled “Innovation Act,” which also proposes a number of significant changes to patent litigation procedures.
Coach Services, Inc., of the design house offering handbags, footwear and other luxury goods, recently lost a design mark battle challenging registerability of E&D Trading, Inc.’s (“E&D”) mark for DP in stylized format (the “Challenged Mark”) on the basis that it is likely to cause confusion with Coach’s federally registered “Signature C Design” marks. The parties’ marks both cover eyewear, among other goods. Coach’s protest was lodged with the Trademark Trial and Appeal Board (“TTAB”), an administrative body that is part of the Trademark Office and has authority to rule on challenges to registerability of marks, among other issues. TTAB proceedings and procedure are governed by the Federal Rules of Civil Procedure, as well as the detailed rules set forth in the TTAB’s Manual of Procedure (“TBMP”).
Last spring, we reported Twitter’s introduction of a novel employee patent assignment plan called the “Innovator’s Patent Agreement” (“IPA”). In short, the IPA is a patent assignment agreement, or transfer of patent ownership from an inventor/employee to a company, where the inventor retains control over how the patent is used. Twitter’s IPA now is in play.
Somewhere, someone must have taken the famous cartoon of Elmer Fudd, in full hunting regalia, and changed the caption to read, “Shhhhhhhhhhh, I’m hunting Twolls.” (After securing the appropriate IP permissions, of course.) This past fall, we posed the hypothetical question of whether it was open season for patent trolls, euphemistically referred to as non-practicing entities (“NPEs”) or patent assertion entities (“PAEs”), in the wake of the new 35 U.S.C. § 299.
Trade Secrets Litigation: DuPont Wins Property from U.S. Subsidiary as Part of its $920M Damages Award Against the Parent
Kolon USA, Inc., the U.S. subsidiary of South Korea-based Kolon Industries Inc. (“Kolon”), recently was ordered by New Jersey District Court Judge Esther Salas to turn over its property to DuPont as part of DuPont’s efforts to enforce the $920 million damages award that DuPont won against Kolon during a 2011 trade secrets litigation in the Eastern District of Virginia.