No Foul: “Jumpman” Can Keep Soaring

Rentmeester v. Nike, Inc., No. 15-35509, 2018 WL 1055846, at *6 (9th Cir. Feb. 27, 2018) (Judge Paul J. Watford)

On February 27, the Ninth Circuit upheld the dismissal of copyright claims against Nike, Inc. alleging that the company’s popular photograph of Michael Jordan and its “Jumpman” logo infringed upon an earlier photograph taken by Jacobus Rentmeester. The court found that although Nike’s photo and logo were “obviously inspired” by the Rentmeester photograph, they were not “substantially similar” and therefore did not infringe upon Rentmeester’s copyrights. READ MORE

Federal Circuit Clarifies Burden For Proving Failure to Mark

Arctic Cat Inc. v. Bombardier Recreational Products, Inc. et al., Fed. Cir. (December 7, 2017)

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

All-or-Nothing Damages Strategy Leads to No Damages Despite Admission of Patent Infringement

Promega Corp. v. Life Technologies Corp., Fed. Cir. (November 13, 2017)

The Federal Circuit affirmed a Wisconsin district court’s decision to overturn the $52 million award a jury awarded to Promega Corporation (“Promega”) in its patent suit against Life Technologies Corp. (“Life”).  The Federal Circuit also upheld the district court’s decision denying Promega’s request for a new trial on damages.  For the Federal Circuit, there was to be no second bite at the apple:  at trial, Promega pursued an all-or-nothing damages calculation strategy that improperly assessed damages based on worldwide infringement, and accordingly it had waived its right to prove damages based on infringement that occurred only in the United States.


Joining an IPR Could Prevent Recovery Under § 285

Order Dismissing Case as Moot, MD Security Solutions LLC, v. Protection 1, Inc., M.D. Fl. (Sep. 26, 2017) (Judge Paul G. Byron)

There may be an unappreciated cost in pursuing a patent validity challenge at the PTAB rather than at the District Court. Litigants choosing the PTAB route may deprive themselves of the right to recover attorneys’ fees.

In MD Security Solutions LLC, v. Protection 1, Inc., plaintiff MD Security Solutions (“MD”) sued for patent infringement, and defendant Protection 1 counterclaimed for a declaratory judgment of non-infringement and invalidity. Shortly afterwards, a third party filed an IPR on the patents-in-suit, and Protection 1 joined the IPR. Given the IPR, the parties agreed to stay the case pending its resolution. The PTAB invalidated the asserted patent claims, and the patentee/plaintiff allowed that decision to become final by choosing not to appeal. Despite that, Protection 1 sought to keep the case alive by seeking attorneys’ fees under 35 U.S.C. § 285 from MD, whom Protection 1 deemed a “patent troll.” In part because the deadline to appeal had already expired by the time Protection 1 sought leave to take its discovery, the trial court had other ideas. READ MORE

E.D. Texas Magistrate Recommendations Highlight How Patent Marking Requirements Can Apply To Method Claims

Report And Recommendation on Motion for Partial Summary Judgment, Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. et al., E.D. Tex. (September 4, 2017) (Magistrate Judge Roy Payne)

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

Inadequate Disclosures Preclude Monetary Damages Recovery in Trademark Infringement Suit

Order Granting in Part and Denying in Part Defendant’s Motion for Summary Judgment, Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc., Case No. 3:15-cv-04618-WHO (Judge William H. Orrick)

As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted.  But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE

Reveal Your Hurt

Corning Optical Communications Wireless Ltd. v. Solid, Inc. et al., 5:14-cv-03750 (Magistrate Paul Grewal) (April 14, 2015)

The days of “wait until we serve our expert report” to reveal damages figures might be over, at least if your case is in front of Judge Grewal.  Patent damages present an especially difficult situation for the parties to calculate damages without discovery, since damages theories will turn, in part, on information known only to the opposing party, such as revenues, sales and licensing practices.  Moreover, though the Patent Local Rules contain extensive disclosure requirements on patent liability issues, they do not contain any similar requirements for the disclosure of damages contentions prior to expert discovery. READ MORE

January/February Recap

It’s interesting to look at the first two months of 2015 against the backdrop of the previous year.  Judge Illston’s orders, for example, suggest that one should not expect much to change in ND Cal judges’ willingness to invalidate patents under Alice (specifically, in her case, a patent for storing “link relationships” between “document objects” in a network) and to stay cases pending IPR (especially when a large number of patents and products are involved).  Magistrate Judge Grewal also followed an approach that we’ve seen before, ruling that both sides in a discovery dispute should make foreign-based party witnesses available for deposition in the Northern District.  Typo Products found itself haunted by the past when Judge Orrick awarded $1 million in sanctions to Blackberry for Typo’s violation of a preliminary injunction.  Meanwhile, Rep. Goodlatte, R-VA, hoped to shake off past failures by reintroducing a version of the Innovation Act bill that died in the Senate last May.

February 2015 was also trial month for the patent litigation between Open Text and Box.  In the preceding weeks, Judge Donato issued several noteworthy decisions, including a Rule 12(c) judgment of invalidity of claims from 5 patents under Alice and a Daubert order excluding the damages opinions of plaintiff Open Text’s expert.  Notwithstanding Open Text’s lack of expert testimony on a reasonable royalty, the jury awarded Open Text $4.9 million in a lump sum (Law360, subscription required).

Over at Patently-O, guest author Andres Sawicki discusses the role of intellectual property in the uniquely Silicon Valley practice of “acqui-hires.” And if all that isn’t enough recap for you, why not revisit our most popular blog posts from 2014?

“Black Box” Damages Theory Won’t Put Plaintiff In The Black

Order Granting Motion to Exclude Expert Opinions and Testimony, Open Text S.A. v. Box, Inc. et al., Case No. 13-cv-04910 (Judge James Donato)

There are many permissible ways for an expert to come up with a damages number, but they need to be expressed according to a clear methodology. That was the overall takeaway from Judge Donato’s order excluding the opinions of Krista Holt regarding the reasonable royalty defendant Box should pay if found to infringe plaintiff Open Text’s patents on file synchronization. After holding a thorough Daubert hearing, Judge Donato concluded that Holt’s damages method was a “black box,” which prevented Court, jury, and opposing counsel from understanding or testing how the data drove her conclusions. Judge Donato also faulted Holt’s proposed opinions for using third-party licenses after she had rejected them as non-comparable and for her handling of apportionment.


Don’t Touch! A Cautionary Tale in Which Court Awards Damages, Fees, and Injunction for Trade Secret Misappropriation by Ex-Employees

Findings of Fact and Conclusions of Law, PQ Labs, Inc. et al. v. Yang Qi et al., Case No. 12-0450 (Judge Claudia Wilken)

It is not uncommon for Silicon Valley employees to switch companies, and the temptation of bringing along materials such as customer lists, pricing information and technical documents to jumpstart their new employment can be strong. It is also not uncommon for such employees to get their new companies in hot water when they act on such temptation and use the materials. Judge Wilken reminded us all that when an employee’s switch in jobs includes misappropriation of his or her former employer’s confidential intellectual property, the consequences can be severe.