Finnegan’s monthly update on developments affecting licensing and other IP transactions
April 2015
Infringers Need to Receive Actual Notice of a Published Patent Application to Recover Damages for Infringing Activity Occurring Before a Patent Issued
by John C. Paul and D. Brian Kacedon
A patent owner may have “provisional rights” to recover reasonable royalty damages accruing between the time its patent application published and the time the patent issued if the infringer received “actual notice” of the published patent application. A Delaware court recently held that evidence merely indicating that the accused infringer could or should have known of the published application fails to establish that the accused infringer had actual notice and did not entitle the patent owner to such provisional rights.
Granting a License on One Invention Does Not Necessarily Exhaust Rights in a Separate and Distinct Invention Useful in Practicing the Licensed Invention
by John C. Paul, D. Brian Kacedon, and Daniel F. Roland
The Federal Circuit recently refused to expand the doctrine of patent exhaustion in a case where the accused infringers’ conduct was separate and distinct from the conduct authorized by earlier granted licenses. The court noted that the doctrine has never been applied to terminate patent rights unless the alleged infringement involved conduct by one authorized to possess or practice the patented product or process. Here, there was no allegation that those authorized under the licenses infringed the asserted patent claims. Likewise there was no allegation that the alleged infringers used the licensed products. Thus, despite that two inventions may be complimentary or enhance each other, exhaustion of one invention does not necessarily exhaust the patent holder’s rights in the other, separate invention.
Difference in Economic Circumstances May Preclude Use of a Settlement Agreement to Support a Reasonable-Royalty Opinion
by John C. Paul, D. Brian Kacedon, and Justin E. Loffredo
A California court recently excluded from trial certain testimony of a patent owner’s damages expert because his reasonable-royalty calculations relied on a different court’s damages award in an earlier case and the value of a prior litigation-settlement agreement. The patent owner argued that its expert properly looked to those events in calculating reasonable royalties, because each of them involved the defendant as the accused infringer and technologies similar to the patents-in-suit. The court, however, held that the expert’s reliance was improper because each of those events took place under circumstances distinct from the “hypothetical negotiation” at issue for determining reasonable-royalty damages. According to the court, the expert’s failure to account for those differing circumstances rendered his reasonable-royalty calculations unreliable.
Attorneys’ Fees Awarded After Patent Owner Lost for a Second Time on the Same Claim-Construction Argument on a Different but Related Patent
by John C. Paul, D. Brian Kacedon, and Benjamin T. Sirolly
A Texas court recently ordered a patent owner to pay over one hundred thousand dollars in attorneys’ fees. The decision came after the court determined on summary judgment that the accused infringers did not infringe the asserted patent under the court’s claim-construction ruling. Importantly, the court had entered the same claim-construction ruling in an earlier case, for a different, but related, set of patents. The court held that the patent owner’s relitigation of the same claim-construction argument, along with what the court deemed to be a litigation strategy designed to inflate the accused infringer’s costs, amounted to “exceptional” conduct and merited an award of attorneys’ fees.
Infringers Need to Receive Actual Notice of a Published Patent Application to Recover Damages for Infringing Activity Occurring Before a Patent Issued
by John C. Paul and D. Brian Kacedon
A patent owner may have “provisional rights” to recover reasonable royalty damages accruing between the time its patent application published and the time the patent issued if the infringer received “actual notice” of the published patent application. A Delaware court recently held that evidence merely indicating that the accused infringer could or should have known of the published application fails to establish that the accused infringer had actual notice and did not entitle the patent owner to such provisional rights.
Granting a License on One Invention Does Not Necessarily Exhaust Rights in a Separate and Distinct Invention Useful in Practicing the Licensed Invention
by John C. Paul, D. Brian Kacedon, and Daniel F. Roland
The Federal Circuit recently refused to expand the doctrine of patent exhaustion in a case where the accused infringers’ conduct was separate and distinct from the conduct authorized by earlier granted licenses. The court noted that the doctrine has never been applied to terminate patent rights unless the alleged infringement involved conduct by one authorized to possess or practice the patented product or process. Here, there was no allegation that those authorized under the licenses infringed the asserted patent claims. Likewise there was no allegation that the alleged infringers used the licensed products. Thus, despite that two inventions may be complimentary or enhance each other, exhaustion of one invention does not necessarily exhaust the patent holder’s rights in the other, separate invention.
Difference in Economic Circumstances May Preclude Use of a Settlement Agreement to Support a Reasonable-Royalty Opinion
by John C. Paul, D. Brian Kacedon, and Justin E. Loffredo
A California court recently excluded from trial certain testimony of a patent owner’s damages expert because his reasonable-royalty calculations relied on a different court’s damages award in an earlier case and the value of a prior litigation-settlement agreement. The patent owner argued that its expert properly looked to those events in calculating reasonable royalties, because each of them involved the defendant as the accused infringer and technologies similar to the patents-in-suit. The court, however, held that the expert’s reliance was improper because each of those events took place under circumstances distinct from the “hypothetical negotiation” at issue for determining reasonable-royalty damages. According to the court, the expert’s failure to account for those differing circumstances rendered his reasonable-royalty calculations unreliable.
Attorneys’ Fees Awarded After Patent Owner Lost for a Second Time on the Same Claim-Construction Argument on a Different but Related Patent
by John C. Paul, D. Brian Kacedon, and Benjamin T. Sirolly
A Texas court recently ordered a patent owner to pay over one hundred thousand dollars in attorneys’ fees. The decision came after the court determined on summary judgment that the accused infringers did not infringe the asserted patent under the court’s claim-construction ruling. Importantly, the court had entered the same claim-construction ruling in an earlier case, for a different, but related, set of patents. The court held that the patent owner’s relitigation of the same claim-construction argument, along with what the court deemed to be a litigation strategy designed to inflate the accused infringer’s costs, amounted to “exceptional” conduct and merited an award of attorneys’ fees.
Standard-Essential Patents and Pooling
January - March 2015
U.S. Litigation
Settlements of Litigation
International
Portfolio Acquisitions and Licensing Agreements
Events
U.S. and EU Licensing Law
April 25, 2015
Issues Affecting Semiconductor and IC Patents and Opportunities from Recent Developments
April 28, 2015
LES Spring Meeting
May 12-14, 2015
Guarding Your Revenue Streams: A Strategic Approach to IP
May 12, 2015
General Counsel Strategy Summit 2015
May 13-15, 2015
Patent App[eals]® includes PDFs of all patent-related Federal Circuit decisions dating back to 2001. A user can search on keywords, judges, dates of decisions, lower court from which the case was appealed, case name, case number, and whether or not a case was heard en banc. In addition, if the decision was summarized in Last Month at the Federal Circuit, the Finnegan case summary is included.
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DISCLAIMER: The information contained herein is intended to convey general information only and should not be construed as a legal opinion or as legal advice. The firm disclaims liability for any errors or omissions and readers should not take any action that relies upon the information contained in this newsletter. You should consult your own lawyer concerning your own situation and any specific legal questions. This promotional newsletter does not establish any form of attorney-client relationship with our firm or with any of our attorneys.
If you have any questions or need additional information, please contact:
John C. Paul, Editor
D. Brian Kacedon, Editor
Mindy L. Ehrenfried, Editor
Christopher L. McDavid, Editor
John C. Paul, Editor
D. Brian Kacedon, Editor
Mindy L. Ehrenfried, Editor
Christopher L. McDavid, Editor
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