January 2017

Harm to Licensees Does Not Justify Preliminary Injunction to Protect Plaintiff’s Licensing Business
by John C. Paul, D. Brian Kacedon, and Daniel F. Klodowski
A California court recently denied Finjan’s motion for a preliminary injunction to prevent the alleged infringer, Blue Coat Systems, LLC, from selling its accused product before trial. Although Finjan was likely to prevail in its infringement suit, and although Finjan’s licensees may have competed with Blue Coat, the court nevertheless found that Finjan was not entitled to a preliminary injunction because it failed to prove that it would suffer irreparable harm if Blue Coat were allowed to continue its activities. In particular, it found that harm to Finjan’s licensees did not create irreparable harm to Finjan or justify Finjan’s request for a preliminary injunction.

Design Patent Damages May Be Limited to the Profits Attributable to the Infringing Component of a Product, Rather than the Whole Product
by John C. Paul, D. Brian Kacedon, and Stephen E. Kabakoff
The Supreme Court found that damages for infringing a design patent on features of a smartphone can be based on profits from the components with the infringed designs and does not need to be based on total profits for the entire smartphone. The relevant “article of manufacture” with the infringed design must be identified, which may be a component of a multicomponent product, then the infringer’s total profit on that article of manufacture is calculated. The Court declined to further provide a test for identifying the relevant article of manufacture.

Retroactive Assignment Fails to Bring into Force Earlier Ineffective Assignments and Fails to Cure Break in Chain of Title
by John C. Paul, D. Brian Kacedon, and Jonathan J. Fagan
Standing to sue for patent infringement requires that the plaintiff have valid legal title in the asserted patents at the time of filing suit. In a consolidated case involving twenty-six patent infringement actions, the plaintiff claimed title to the asserted patents through a series of transactions, including an assignment by a parent corporation that never obtained a valid written assignment of the patents that were actually held by its subsidiary. The Maryland court ruled that a retroactive assignment from the subsidiary to the parent made after the parent’s transfer was ineffective to bring into force earlier ineffective assignments or cure the defect in chain of title. Therefore, the plaintiff never acquired title to the asserted patents and did not have standing to sue.

Resources
Standard-Essential Patents and Pooling Update
October 2016 – January 2017 Update

Events
2017 LESI Winter Meeting
Bangkok,Thailand
February 3-4, 2017

LESI Annual Meeting
Bangkok,Thailand
April 23-25, 2017

LES Asia Pacific Conference
Melbourne, Australia
May 9-12, 2017