On Friday, the Federal Circuit decided Arctic Cat Inc. v. Bombardier Recreational Products, Inc. and clarified the burden of proof for the failure to mark defense. Under 35 U.S.C. § 287, a patentee’s pre-suit damages can be limited if the patentee (or its licensee) didn’t mark previously sold “patented articles.” Parties often dispute whether an unmarked product is a “patented article” that actually practices the claim limitations of a patent. The Arctic Cat decision holds that once the alleged infringer identifies the unmarked products, it becomes the patentee’s burden to prove that those unmarked products aren’t “patented articles.” READ MORE
Vickie Feeman, a partner in the Silicon Valley office, is a member of the Intellectual Property Group. She has been representing clients in intellectual property disputes in federal courts and the ITC for more than 20 years.
Before attending law school, Vickie worked as an electrical engineer for Motorola Inc.'s Government Electronics Group, where her work focused on the design of circuits for satellite communications systems.
- Good Technologies, Inc. v. Mobile Iron, Inc. Won a complete defense verdict for Mobile Iron in a patent infringement action in the Northern District of California related to mobile device management technologies.
- In the Matter of Electronic Devices With Image Processing Systems, Components Thereof, and Associated Software (ITC Investigation No. 337-TA-724, 2011). Represented respondent Apple Inc. before the ITC in an investigation concerning image compression technology. After a hearing and briefing, the full Commission determined there was no violation by Apple of any asserted patent.
- Authenex, Inc. v. EMC Corporation and RSA Security, LLC. Defended EMC and RSA in two patent infringement lawsuits in the Central District of California involving authentication tokens. Both cases were terminated after EMC obtained a favorable claim construction and summary judgment of non-infringement.
- IXYS v. Advanced Power Technologies. Co-counsel defending APT in a patent infringement action involving Power MOSFETs, achieving summary judgment of both invalidity and noninfringement. The court’s summary judgment decision is reported as IXYS Corp. v. Advanced Power Technology, Inc. 321 F. Supp. 2d 1133 (N.D. Cal. 2004). APT’s favorable claim construction decision is reported at 301 F. Supp. 2d 1065 (N.D. Cal 2004).
- Plastic Omnium v. Donghee. Recently filed 7 IPRs on behalf of Donghee challenging patents asserted against Donghee by Plastic Omnium in the District of Delaware.
- In the Matter of Certain Formatted Magnetic Data Storage Tapes and Cartridges Containing the Same. Represented FUJIFILM Corporation and Oracle Corporation in an ITC investigation involving servo format heads.
- Preservation Technologies v. Dish Networks, L.L.C., Defended Dish Networks in a patent infringement lawsuit in the Central District of California related to online distribution and cataloging of multimedia content.
- Mentor Graphics v. Synopsys, Inc. Co-counsel for Synopsys in a patent infringement action in the District of Oregon. The seven patents at issue in that case are directed to circuit emulation and verification technologies.
- LucaArts. Achieved summary judgment for LucasArts in trade secret matter in Northern District of California related to LucasArts "golden guy" mark.
- Universal Studios, Lucas Digital, and Oscar-Winning Special Effects Artist Christopher Boyes. Successfully defended these clients in a copyright infringement case involving the movie The Lost World: Jurassic Park.
- Sony v. Connectix Corp. Defended Connectix in a dispute over the creation of a PlayStation® emulator involving copyright, trade secret and patent claims. These disputes were decided in part by the Ninth Circuit in its major fair use decision in Sony Computer Entertainment, Inc. et al. v. Connectix Corp. 203 F.3d 596 (9th Cir. 2000).
- Rambus, Inc. v. NVIDIA Corp. Successfully defended NVIDIA in a patent dispute related to products that use certain DRAM interfacing technologies required by industry standards.
- Rambus, Inc. v. Nanya Technology Corporation. Represented Nanya Technology Corp. against claims of infringement of 18 DRAM patents.
- Indivos Corporation. Represented Indivos in patent litigation involving biometric payment systems.
- Personalized Media Communications. Represented PMC before the ITC in a Section 337 proceeding, involving direct broadcast satellite television systems, which was resolved in part in PMC's favor by the Federal Circuit.
- Universal City Development Partners. Defended Universal in a patent dispute involving motion control mechanisms for amusement park rides.
- Tekmira Pharmaceuticals Corp. and Protiva Biotherapeutics, Inc. v. Alnylam Pharmaceuticals, Inc. and Alcana Technologies, Inc. Represented Tekmira and Protiva in a case before the Business Litigation Section of Massachusetts state court. Tekmira and Protiva alleged misappropriation of trade secrets relating to lipid-based siRNA delivery technology, along with claims of breach of contract and unfair competition.
Posts by: Vickie Feeman
Magistrate Judge Roy Payne’s recent Report and Recommendation in Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. shines a spotlight on potential inconsistencies in Fed. Cir. precedent regarding patent marking, and provides some valuable insight to plaintiffs and defendants who may be involved in litigation over a patent’s method claims. READ MORE