The IP File’s mission is to scour the universe for compelling stories in intellectual property law. In the United States, there are four main types of intellectual property protection available: patents, copyrights, trademarks and trade secrets.
Patents claiming inventions which must be used to comply with certain technical standards (for example, the Wi-Fi standard or standards for 3G) are referred to as standards-essential patents or “SEPs”. There has, historically, been little judicial guidance concerning damages in cases where SEPs are implicated. The recent Federal Circuit ruling in Ericsson, Inc. v. D-Link Sys., Inc., finally provides some guidance on the issue of determining damages in such cases. No. 2013-1625, 2014 WL 6804864 (Fed. Cir. Dec. 4, 2014). In addition to providing insight on several apportionment issues specific to SEPs, the court also held that simply reciting all Georgia-Pacific factors to a jury is unacceptable and that jury instructions must only include the specific factors relevant to the evidence presented.
Through its recent decision in Stryker Corp. v. Zimmer, Inc., the Federal Circuit gave Zimmer an early Christmas gift worth approximately $140 million by reversing a district court’s determination of willfulness and vacating a corresponding award of trebled damages against Zimmer. The reversal was based on the Federal Circuit’s finding that the noninfringement and invalidity defenses raised by Zimmer were “not objectively unreasonable.”
You are a trademark licensee, and your licensor suddenly declares bankruptcy. Then, to make matters worse, the bankruptcy trustee rejects your licensing agreement. What does this mean for you? Although intellectual property rights are protected under Section 365(n) of the Bankruptcy Code, trademarks are not covered under this provision, calling into question the trademark licensee’s right to continue to use the mark where the licensor has gone into bankruptcy and the license has been rejected by the bankruptcy trustee. However, a recent New Jersey bankruptcy court decision suggests that trademark licensees may avail themselves of the protections of Section 365(n) after all. In the case of In re Crumbs Bake Shop Inc., Case No. 14-24287 (Bankr. D. N.J. Oct. 31, 2014) (ECF No. 288), the court did what Congress failed to do, finding that trademark licensees are entitled to protection under Section 365(n) of the Bankruptcy Code, and allowing licensees to continue to use their intellectual property following the rejection of their licensing agreements by a bankruptcy trustee.
By: Kollin J. Zimmermann
“Priority of use” is a key issue in any case involving a trademark ownership dispute. As the Ninth Circuit has explained, “To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.” Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1047 (9th Cir. 1999).
Navigating damages in patent cases is a complex exercise. In this series, beginning with the marking statute, we explore various nuances of damages analysis.
In its most recent decision in Ultramercial, Inc. v. Hulu, the Federal Circuit finally concluded that the claims-at-issue do not cover patent-eligible subject matter under 35 U.S.C. § 101. This comes after two prior decisions by the Federal Circuit reaching the opposite conclusion, and two orders from the U.S. Supreme Court instructing the Federal Circuit to reconsider those two decisions.
It’s been nearly half a year since the Supreme Court, in Octane Fitness, ostensibly lowered the standard for finding a patent case to be exceptional for purposes of fee-shifting. At the time, Octane generated much commentary and speculation, with some predicting a flood of fee awards and others predicting even more confusion at the district court level.
Since 2010, the Supreme Court has issued four decisions on patent-eligible subject matter under 35 U.S.C. § 101. In the most recent decision, Alice Corp. v. CLS Bank, the Court continued the restrictive approach set forth in its own precedents in Gottschalk v. Benson, Parker v. Flook, and Diamond v. Diehr, and invalidated patents directed to computerized methods for mitigating settlement risk by using a third-party intermediary. The most significant passage in the Alice decision is that the Court expressly adopted the two-step test it elaborated in Mayo Collaborative Services v. Prometheus Laboratories for all types of patent subject matter issues, including laws of nature, natural phenomena, and abstract ideas.
Co-owning any piece of property can lead to unwanted and unexpected headaches. And as demonstrated by the Federal Circuit in STC.UNM v. Intel Corp., Fed. Cir. No. 2013-1241, this is especially true with respect to co-ownership of patents. Here, the Federal Circuit held that STC lacked standing to bring its patent infringement lawsuit against Intel because Sandia Corp., a co-owner of the patent-in-suit, refused to voluntarily join the lawsuit, and could not be involuntarily joined under Federal Rule of Civil Procedure 19(a).
Hatch-Waxman Litigation in a NutshellHatch-Waxman litigation refers to pharmaceutical patent litigation between a brand drug manufacturer and a generic drug manufacturer under the Hatch-Waxman Act (“Act”). The Act was enacted to facilitate generic drug entry into the market while encouraging pioneer drug development. This is achieved by providing carefully balanced statutory incentives, such as a five-year data exclusivity to the brand firm and a 180-day market exclusivity to the first generic firm, and procedures for approval and marketing of generic drugs.