The Federal Circuit Reverses Damages Award For Sales Of Infringing Products Prior To Actual Notice Of Infringement
On September 1, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) found that the District Court for the Central District of California erred in awarding damages for sales of infringing products prior to the date that the infringer received actual notice of infringement for failure to prove its compliance with the patent marking statute. Lubby Holdings LLC v. Henry Chung, __ F.3d __ (Fed. Cir. Sep. 1, 2021).
Federal Circuit Affirms Exclusion Of Damages Expert’s Royalty Rate Opinions
On August 26, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an order affirming orders from the United States District Court for the Northern District of California excluding certain opinions of plaintiff’s damages expert. MLC Intellectual Property LLC v. Micron Technology Inc., __ F.3d __ (Fed. Cir. August 26, 2021). In its decision, the CAFC let stand the district court judge’s orders precluding plaintiff’s damages expert from characterizing certain license agreements as supporting his reasonable royalty rate determination.
Eastern District Of Texas Grants Opposition To Enhanced Damages In “Garden-Variety” Patent Case
On April 22, 2021, the United States District Court for the Eastern District of Texas granted defendants’ motion opposing enhanced damages under 35 U.S.C. § 284. Wapp Tech Ltd. Partnership v. Seattle Spinco, Inc., No. 4:18-cv-469 (E.D. Tex. Apr. 22, 2021). The Court found plaintiffs’ argument that defendants did not present a good faith defense unpersuasive, and instead ruled that the case “was a ‘garden-variety’ patent case, rather than an egregious case of misconduct.”
Central District Of California Finds Marking Of Product Packaging Insufficient Under 35 U.S.C. § 287.
On January 6, 2021, Judge James V. Selna of the United States District Court for the Central District of California granted, in part, defendant Feit Electric Co., Inc.’s (“Feit”) motion for partial summary judgment related to plaintiff Zadro Prods, Inc.’s (“Zadro”) alleged failure to properly mark certain products. Zadro Prods, Inc. v. Feit Electric Co., Inc., Case No. SACV-20-101-JVS (C.D. Cal. Jan. 6, 2021). Judge Selna found that: (1) Zadro’s alleged failure to disclose that it marked its products in a discovery response was not grounds for summary judgment; (2) an issue of material fact remained as to whether Zadro’s products practiced one of the patents in suit; and (3) Zadro’s marking of the packaging of its products which practiced one of the patents in suit (rather than the products themselves) was insufficient under 35 U.S.C § 287.
Judge Alsup Partially Grants Section 285 Request For Attorneys’ Fees Due To Exceptional Nature Of Case, Lamenting “Standard Patent BS By Bought-And-Paid-For Experts”
On January 9, 2021, Judge Alsup of the U.S. District Court for the Northern District of California granted, in part, a request for attorneys’ fees to the prevailing defendant. Finjan, Inc. v. Juniper Network, Inc., case no. C 17-05659 (N.D. Cal. Jan. 9, 2021). Judge Alsup found that plaintiff’s case stood out as exceptional in certain respects and, accordingly, issued a limited award for attorneys’ fees under 35 U.S.C. § 285.
Federal Circuit Finds That Cessation Of Sales Of Unmarked Patented Articles Does Not Excuse Noncompliance With The Statutory Notice Requirement
On February 19, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the judgment of the United States District Court for the Southern District of Florida concerning the notice requirement for collecting back-damages in cases of patent infringement. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., ___ F.3d __ (Fed. Cir. Feb. 19, 2020). In particular, the CAFC found that the statutory patent marking requirement continues to limit damages after a patentee or licensee ceases sales of unmarked products, and that willful infringement does not establish actual notice under the statute. 35 U.S.C. § 287.
Federal Circuit Reverses Damages Award Based On Hypothetical Freedom-to-Operate Royalty Negotiation
On November 19, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing in part a patent-infringement judgment of the United States District Court for the Northern District of California. Enplas Display Device Corp. v. Seoul Semiconductor Co., —F.3d—, (Fed. Cir. November 19, 2018). The CAFC ruled that the jury’s damages award was based on sales of non-infringing products, and reversed the District Court’s denial of judgment as a matter of law as to the damages award.
Federal Circuit Vacates Enhanced Damages Award
On July 10, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion in an appeal from a District Court decision in a patent-infringement case, affirming the District Court’s finding of patent validity, but vacating the District Court’s award of enhanced damages of two-and-a-half times the original damages amount. Polara Eng. Inc. v. Campbell Co., Appeal Nos. 2017-1974 and 2017-2033 (Fed. Cir. July 10, 2018). The CAFC found that the District Court wrongly assessed the closeness of the case, and remanded the enhanced-damages issue to the District Court for further consideration.
Supreme Court Reverses Federal Circuit And Holds That Patent-Infringement Damages Suffered Overseas May Be Recoverable Under U.S. Patent Law
On June 22, 2018, the United States Supreme Court reversed the Court of Appeals for the Federal Circuit (CAFC) on the issue of whether damages suffered overseas can be recovered as remedy for infringement under the U.S. patent laws. WesternGeco LLC v. ION Geophysical Corp., 585 U.S. ____, case no. 16-1011. The Supreme Court ruled that such damages can be recoverable.
Patent Notice Printed In Surgical Guide Ruled Insufficient Marking Of Patented Surgical Implant
On May 19, 2018, the United States District Court for the Eastern District of Wisconsin denied a patent owner’s request for reconsideration of a decision that the patent owner had not complied with the marking statute, and that therefore its damages in the pending infringement case would be limited, pursuant to that statute. Acantha LLC v. Depuy Orthopaedics, Inc., et al.
, Case No. 15-C-1257 (E.D. Wis. May 19, 2018). The Court rejected the patent owner’s argument that placing a patent notice in its surgical guide constituted sufficient marking.
Federal Circuit Holds That There Is No Right To A Jury Trial On A Claim For Disgorgement As A Remedy For Trade Secret Misappropriation
On Tuesday, May 1, 2018, the United States Court of Appeals for the Federal Circuit issued a decision affirming liability of plaintiff’s trade secret misappropriation claim, but vacating the monetary damages award. Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., f/k/a Intersil Corp.
, Appeal Nos. 2016-2121, 2016-2208, and 2016-2235. The Court held that plaintiff Texas Advanced Optoelectronic Solutions (“TAOS”) did not have a jury trial right on its claim for disgorgement of defendant Intersil’s profits, since disgorgement is equitable in nature and was not historically heard by law courts, at least as it concerned intellectual property claims.
Supreme Court Hears Oral Argument In Key Patent Damages Case
On April 16, 2018, the United States Supreme Court heard oral argument in the case of WesternGeco LLC v. ION Geophysical Corporation
, which presents the question whether a patent owner can recover damages suffered outside of the United States for infringing acts that occurred within the United States.
Federal Circuit Upholds Texas Trial Court On Section 101 And On Claim-Construction Burden-Of-Proof Issues, And Again Takes Appellate Jurisdiction While Damages Issues Remain Pending In The Trial Court
On January 25, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the trial court’s decisions that a user-interface patent claims patentable subject matter and that unrebutted expert testimony did not require a jury to find anticipation, as well as its claim-construction decisions, all while damages issues remained unresolved in the trial court. Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.
, appeals nos. 2016-2684 and 2017-1922.
Federal Circuit Finds Computer Security Method Patentable, But Overturns Damages Award
On January 10, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion considering the apportionment problem in patent damages and overturning a jury’s $40M reasonable-royalty award. Finjan, Inc. v. Blue Coat Systems
, appeal no. 2016-2520.