Post-Verdict Proceedings

And the Survey Says: Nothing?

Order Vacating ITC Invalidity and Infringement Determinations and Remanding for Further Proceedings, Converse, Inc. v. Int’l Trade Commission, (Fed. Cir.) (Oct. 30, 2018) (Judges Dyk, O’Malley, and Hughes)

We’ve previously discussed some of the challenges of obtaining quality consumer survey evidence in trademark litigation in past posts, such as here and here. The persuasiveness and wisdom of a consumer survey was once again called into question, this time by the Federal Circuit in its October 30 opinion in Converse’s long-running trademark litigation against Skechers, New Balance, and others. The appeals court identified a “series of errors” requiring remand, including that the International Trade Commission applied incorrect standards to both invalidity and infringement and erred in its secondary meaning analysis. READ MORE

Potential Issues for “Not Yet Practicing” PTAB Petitioners: Constitutional Requirements for Appealing PTAB Decisions

Order Reversing-In-Part, Vacating-In-Part, and Remanding, Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc., Appeal No. 2017-1487 (Fed. Cir. May 2, 2018) (Judge Evan J. Wallach)

Occasionally, a company may file a proceeding before the Patent Trial and Appeal Board (the “PTAB”), not with respect to its current use and practice of the contested patent, but for its potential future practice of the patent.  For example, a company may seek inter partes review (“IPR”) of a patent it does not use or infringe upon, purely for the purpose of clearing a pathway to use the patented technology several years down the line, before spending substantial resources to develop a product using that technology.   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.


Don’t Bury Your Head in the Sand

Asetek Danmark A/S v CMI USA, Inc., Case No. 13-cv-00457 (JST) (Tigar, J)

Patent litigation can be an expensive process for a defendant. That is why it is tempting for a defendant to try to exit a case as early as possible. Doing so, however, may not insulate a company from risk despite its absence in the case. Asetek Danmark v. CMI is a case in point. READ MORE

Obtaining a Judgment as a Matter of Law Is Not an Easy Task, as Both Parties Learned

Order on Post-Verdict Motions, Digital Reg of Texas, LLC v. Adobe Systems, Inc., No. C 12-1971 CW (Judge Wilken)

It’s easy to forget that in patent litigation, the question of whether a claim is invalid as obvious is not a fact question.  Rather, it is a question of law.  That is not to say, however, that a jury cannot be asked to address the underlying factual questions related to obviousness, and render an advisory verdict that the claim is, or is not obvious.  And, as a recent ruling from Judge Claudia Wilken reflects, the jury’s conclusions frequently can, and will, be adopted by the Court.


Resistance is ‘Futile’ (Unless you sufficiently plead issues of material facts)

Motion Opposing Amendment of Answer for Futility Denied, Cypress Semiconductor Corp. v. GSI Tech., Inc., Case No. 13-cv-02013-JST (Judge Tigar)

Undoubtedly, for many companies, patent litigation can seem like a five year mission to explore strange new theories and strange new patents.  In a recent patent infringement suit, defendant GSI  “boldly” moved to amend its one-year-old answer in order to add various new affirmative defenses, including one raising the allegation that a reexamined patent was unenforceable due to inequitable conduct.  The plaintiff, Cypress, opposed the motion to the extent it would introduce the defense of inequitable conduct into the litigation.  Cypress claimed that GSI’s amendment would be futile because GSI could not satisfy the two requirements of “but-for” materiality and scienter necessary to prove inequitable conduct under the Federal Circuit’s controlling precedent of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1291 (Fed. Cir. 2011) (en banc).  Judge Tigar disagreed. READ MORE

For Patentees Seeking a Permanent Injunction, the Fight’s Not Over…

Ruling on Motion for Permanent Injunction, Sealant Sys. Int’l Inc. v. TEK Global S.R.L., Case No. 5:11-cv-00774-PSG (Magistrate Judge Grewal)

You may think that once a patentee has won an infringement suit with a competitor who sells products employing the patented technology, the fight is over and the infringer, upon a showing of causal nexus, will be enjoined from further use of the patented article.  You would be wrong.  According to a recent order by Magistrate Judge Grewal, in order to obtain a permanent injunction, a patentee that can demonstrate a causal nexus between a patented feature and the popularity of the infringing product containing said feature still has to prove equitable relief is proper.  Fortunately for the plaintiff involved, Magistrate Judge Grewal found that the conditions for a permanent injunction were, in fact, satisfied. READ MORE

“Mark” My Words – It is the Infringer Who Bears the “Burden”

Ruling on Motions for JMOL Regarding Marking Requirement, Sealant Sys. Int’l Inc. v. TEK Global S.R.L., Case No. 5:11-cv-00774-PSG (Magistrate Judge Grewal)

What do you do if you’re a patentee trying to establish that you’re not subject to the patent marking requirement because your sister company actually sold and marketed the patented product instead of you?  Magistrate Judge Grewal, acknowledging that there is no settled answer to this question, recently found one solution.  He placed the burden of proving that the patentee failed to properly mark its own good squarely on the defendant. READ MORE