Litigator’s Perspective: I’ve a Hunch You’re Stealing My Invention

By Joel Leeman. A member of our Litigation Practice Group

 

The Federal Circuit, the appeals court for all patent litigations, has given its blessing to the no-frills complaint that has become standard in infringement lawsuits. The court bucks recent judicial trends of mandating more detailed pleadings in support of claims for relief.

Patent litigation, for all its knotty complexities and notoriously high cost, is typically launched with a complaint of surprising spareness. The patent owner need only say he owns a specific patent and that the defendant is infringing it by making, selling and/or using a device or method that practices the patent.

Indeed, an appendix to the rules of civil procedure includes a sampler of complaints for a dozen different situations, all intended, in the words of Rule 84, to “illustrate the simplicity and brevity that these rules contemplate.” Form 18 is a complaint for patent infringement laid out in a mere four paragraphs.

Sometimes, parties on the receiving end of an infringement complaint feel frustration when the lack of detail leaves them wondering how precisely they are thought to be infringing. Two such defendants, Time Warner and DirecTV, persuaded a federal judge in Los Angeles to dismiss an infringement complaint from K-Tech Telecommunications for failure to state a claim.

It’s not enough, said the judge, that K-Tech thinks the defendants “must” be infringing. Even though the complaint met the bare-bones criteria of Form 18, the judge faulted K-Tech for not explaining why it believed the two defendants were practicing K-Tech’s patented method rather than some alternative method that did not infringe.

In K-Tech Telecommunications v. Time Warner Cable, the Federal Circuit stood up for traditional modes of pleading, holding that the law does not require a patent owner to identify the devices or methods that are believed to be infringing. It follows that a plaintiff need not exclude the possibility that the defendant is using a noninfringing alternative. (More)

To the Chagrin of Copyright Holders, Consumers Win the Right to Resell Imported Books

By Sharona Sternberg. A member of our Litigation Practice Group

 

Just over a century ago, when buying a book for a dollar still seemed expensive, the Supreme Court first recognized the “first sale doctrine,” a basic exception to a copyright owner’s distribution rights. Once a consumer buys a copyrighted product, like a book, the copyright holder—whether it be the author or a publisher—has exhausted all rights to control the product’s downstream distribution.

As long as the legitimate buyer does not make any copies, he is free to give away, lend, or discard his book as he pleases. Most significantly, the buyer can resell the book at any price, potentially undercutting the demand for new books sold at prices set by the original copyright owner or publisher.

Following the 1908 Bobbs-Merrill decision and subsequent cases, the first sale doctrine was codified as § 109(a) of the Copyright Act. In 1998, the U.S. Supreme Court in Quality King revisited the right of resale, holding that a copyrighted item manufactured in the United States but sold abroad could be legally imported and resold in the U.S. The court held that the copyright owner’s importation right [§ 602(a)(1)] is subject to the general distribution right, which is expressly limited by the first sale doctrine. Goods can thus make the round-trip to Malta and back without the permission of the copyright holder.

The Quality King court, however, did not resolve the more common scenario in which a copyrighted product is manufactured abroad and sold abroad (often at a price lower than for the same product in the United States), and is later resold in the U.S. at a discount.

Without committing itself, the court implied that the sale into the United States of these “gray market” goods would not be protected by the first sale doctrine. In a 2010 case, Costco v. Omega, the court addressed this exact quandary. However, because of Justice Kagan’s recusal due to her participation in the case as Solicitor General, the court was deadlocked at 4-4 and the debate continued. (More...)

Patent Owners Gain Revitalized Right of Enforcement Against Equivalents

By Robert Asher. Co-Chair of our Patent Practice Group

Recent decisions by the Federal Circuit Court of Appeals have breathed life into the doctrine of equivalents. This doctrine is judge-made law that allows patent owners to establish infringement when an accused product or method has skirted the literal wording of the patent claims but is only insubstantially different from the claimed invention.

The claims of a patent typically define the legal scope of the invention. The broader the claims, the more expansive the patent protection and the more difficult it is to get the claims allowed in the U.S. Patent and Trademark Office.

Due to the vagaries of language and invention and the unforeseeability of all variations on an inventive concept, any word or phrase in a patent claim offers aggressive competitors an opportunity to design around the words, while still benefiting from the inventive teachings. The doctrine of equivalents was developed to protect the invention when the claim language turns out to be too limiting.

The patent litigated in Deere & Co. v. Bush Hog, LLC (2012) was directed to a rotary cutter deck that houses one or more powered mower blades. The upper deck slopes downwardly “into engagement with, and being secured to” the lower deck. Rather than directly engaging the upper deck with the lower deck, the accused products included an intermediate structure connecting the upper deck to the lower deck.

The district court judge found no infringement because the upper deck of the accused product did not directly contact the lower deck. The Federal Circuit reversed, stating “into engagement with” did not require direct contact. Indirect contact could suffice. (More)

Biotechnology Industry Reaps a Harvest of Patent Protection from Supreme Court Ruling

 

By Wei Campbell and Kathleen Williams. Members of our Life Sciences Practice Group

May 2013 IP Update
 

At the height of this spring season, the Supreme Court planted a seed of hope for the biotechnology and other industries that offer self-replicating technologies. In Bowman v. Monsanto Co., the court unanimously ruled that farmer Vernon Bowman infringed upon Monsanto’s patents on soybean seeds when he replanted these genetically modified seeds to create more crops without paying Monsanto a fee.

The question before the court was “whether a farmer who buys patented seeds may reproduce them through planting and harvesting without the patent holder’s permission.” Monsanto holds patents on genetically modified soybean seeds, Roundup Ready, which are resistant to glyphosate, the active ingredient in many herbicides. (More)