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Intellectual Property
South Texas College of Law Houston
Field, Ted L.

IP Litigation | Field | Spring 2017
Chapter 1: Introduction
Types of IP Protection
Word, name, symbol, device
and distinguishes goods from those sold by others
Indicates source of the goods (even if source is unknown)
work of authorship
in a tangible medium
Of expression
What you’re actually protecting
Exclusive Rights of Copyright Holder
Derivative works
Public distribution of copies
Public performance
Public display
Trade secrets
used in a business that:
Has commercial value from the fact of its secrecy; AND
Is subject to reasonable efforts to maintain its secrecy
Types of trade-secret misappropriation:
or illegal acts (e.g., wiretapping)
Breach of confidential relationship (may or may not be contractual)
Express or implied
“Other improper means”
Utility Patent
Process (method)
Composition of matter
Design Patent
Ornamental features
US Constitution – Patent and Copyright Clause
US Constitution Article 1, Section 8
The Congress shall have Power To . . . promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries . . . .
Patent Litigation Overview
US District Court
Patent owner files civil action against alleged infringer for patent infringement (35 USC § 271)
Appeal >
US Court of Appeals for the Federal Circuit (CAFC)
Has exclusive jurisdiction (subject matter) over patent appeals
Created to spur uniformity in patent law
Appeals from USPTO go here as well
Cert. Pet. >
Procedural Aspects
Civil action
Federal district courts have exclusive original jurisdiction
U.S. Court of Appeals for the CAFC has exclusive appellate jurisdiction
Supreme Court review of CAFC is possible
Substantive Aspects
Patent infringement – two-step analysis:
Claim construction
Does claim read on accused device or process?
Literal infringement v. doctrine of equivalents
Preliminary injunction
Permanent injunction
Reasonable royalties
Lost profits
Whose law to apply? Grappling with Procedural Issues?
Biodex Corp. v. Loredan Biomedical, Inc.
Main issue: whether post-verdict judgement as a matter of law (jnov) is sufficient to preserve full rights for appellate review
applies their own precedent, not the district court’s precedent
Sufficiently tied up in patent law
When CAFC hasn’t decided which law to apply, you have to figure out what’s best for your client
When CAFC has decided which law to apply, then go with precedent. Must research the issue to figure out which law applies.
Because P had not preserved reviewability when failing to file post-verdict motions for judgment notwithstanding the verdict the court could only reverse for prejudicial legal error.
Whose substantive law to apply?
Patent – appeals from USPTO
Patent infringement – appeals from district court
Trademark – appeals from USPTO denial of registration
Copyright, trademark infringement – appeals from district court
Regional circuit
Antitrust claims
Regional circuit, EXCEPT, where issue “clearly involve[s] [CAFC’s] exclusive jurisdiction”
Chapter 2: The Parties: Who Can Bring Suit?
Assignment v. License
= “transfer of all rights under the patent for a fixed sum”
= “grant of the right to operate under the patent for a royalty which is based upon the extent to which the invention is used”
35 U.S.C. § 261. Ownership; assignment.
Subject to the provisions of this title, patents shall have the attributes of personal property.
Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.
An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.
Standing to Bring Suit – Exclusive and Non-Exclusive Licenses
Propat International Corp. v. RPost, Inc.
P has no standing to sue
P was licensed to handle the litigation and licensing
P argued they have standing because Authentix transferred all substantial rights to P
Court held that Authentix still owns the patent, has to maintain the patent (pay the maintenance fees)
Economic interests
Litigation damages
Control interests
Right to veto P’s decisions
Need an exclusive license to sue the infringer by yourself
Exclusive vs. Non-Exclusive License
Exclusive license = patent owner does NOT retain right to license to others
Suffers legal injury from an act of infringement
Non-Exclusive license = patent owner DOES retain right to license to others
Licensee Standing
Patent owner – HAS standing
Transferee of “all substantial rights” – HAS standing
Exclusive licensee – HAS standing, but MUST JOIN the patent owner
Non-Exclusive Licensee – NO standing even if the patent owner is joined
Limits on Validity Challenges by Licensees and Assignors
Lear, Inc. v. Adkins
Licensee argued they didn’t have to pay royalty payments
Said it was invalid
Holding of this case is that there is no more licensing estoppel
Arguments in favor of licensing estoppel
Contracts should be enforceable
Arguments against licensing estoppel
Patent invalid, prior art found
Public benefits because there will no longer be a monopoly on the product.
It should have always been in the public domain.
Outweighs the contract interest
Diamond Scientific Co. v. Ambico, Inc.
We have assignor estoppel but not licensee estoppel.
Difference in public policy
Got your benefit already by assigning it
Usually an upfront payment
Fairness and justice
Shouldn’t be able to sell something and assert later that what you sold is worthless
Declaratory Judgments Actions
28 USC § 2201. Creation of remedy.
(a) In a case of actual controversy within its jurisdiction, … any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought. Any such declaration shall have the force and effect of a final judgment or decree and shall be reviewable as such.
Explicit threat or other action by patentee that creates an objectively reasonable apprehension of suit in DJ-plaintiff; -AND-
Present potentially infringing activity OR concrete steps taken with intent to conduct such activity.
MedImmune, Inc. v. Genentech, Inc.
Issue – whether licensee must terminate and infringe the patent before it can bring a declaratory judgment
P paying royalties under protest

n for sanctions must be made separately from any other motion and must describe the specific conduct that allegedly violates Rule 11(b). The motion must be served under Rule 5, but it must not be filed or be presented to the court if the challenged paper, claim, defense, contention, or denial is withdrawn or appropriately corrected within 21 days after service or within another time the court sets. If warranted, the court may award to the prevailing party the reasonable expenses, including attorney’s fees, incurred for the motion.
(4) Nature of a Sanction. A sanction imposed under this rule must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated. The sanction may include nonmonetary directives; an order to pay a penalty into court; or, if imposed on motion and warranted for effective deterrence, an order directing payment to the movant of part or all of the reasonable attorney’s fees and other expenses directly resulting from the violation.
Judin v. United States
P suing for patent infringement.
Issue: did patentee engage in a reasonable amount of inquiry before filing suit?
Patentee went to the post office and saw the post office using the infringed device. All he could see was that the device had a light source and a rounded tip through with the light could pass; couldn’t see any details or whether the main claim limitations were met or not. Patentee decided it might infringe, I’ll file a complaint and find the rest out through discovery.
Never attempted to get the device from the post office or the manufacturer or the device. The Court decided here that was something they should have asked for. This is where the problem arises. No evidence patentee compared the device with the patent claims before filing.
Court is supposed to decide whether Rule 11 was violated when the suit was filed, even if it turns out that it was reasonable later.
Pre-Suit Investigations
The P must make a “reasonable inquiry under the circumstances” as to an infringement claim
Amount of investigation needed depends on time available to investigate and the probability that more investigation will turn up important evidence
Absent notice, a P does NOT normally need to investigate invalidity
BUT DJ-plaintiff must investigate invalidity
Where facts are in exclusive control of potential opposing party, the P must investigate to the extent possible, but can also rely on discovery
The reasonableness of the investigation determines whether a pre-suit investigation is appropriate, NOT the truth of the contentions
Duties of Potential Infringement Plaintiff
Claim interpretation
Need reasonable interpretation supported by evidence
Determine whether claims read on accused device/process (literally/DOE)
DOE – doctrine of equivalents
Usually make claim chart