By Shaukat A. Karjeker

Depending upon where you stand, on June 14, 2012, the Federal Circuit Court of Appeals either executed a “bloodless” coup d’état, or brought order to the issue of enhanced damages in patent cases.  In Bard Peripheral Vascular, Inc. et al. v. W. L. Gore and Associates, Inc. ((Bard Peripheral Vascular, Inc. v. W. L. Gore & Associates, Inc., No. 03-CV-0597, slip op (Fed. Cir. June 14, 2012); 2012 LEXIS 13561. Bard has been followed in several cases, including: Highmark, Inc. v. Allcare Health Mgmt. Sys., (Fed Cir 2012), 701 F.3d 1351; 2012 U.S. App. LEXIS 25054;  Sargent Mfg. Co. v. Cal-Royal Prods., (D Con), 2012 U.S. Dist. LEXIS 105260;  Tomita Techs. United States, LLC v. Nintendo Co., (SD NY), 2013 U.S. Dist. LEXIS 8111; and Carnegie Mellon Univ. v. Marvell Tech. Group, LTD., (WD Pa), 2012 U.S. Dist. LEXIS 157337 (noting that mixed questions of law and fact may be resolved by submitting special interrogatories to the jury on fact issues).)), the court ruled that the preliminary determination of “willfulness,” a sine qua non for enhancement of damages, is a matter of law for the court to determine, and subject to de novo review on appeal.  This takes the issue out of the hands of the jury and places both the determination of willfulness as well as the enhancement of damages in the hands of the trial judge.  Since judicial interpretation of statutes is retrospective, Bard applies to all ongoing litigation ((Voda v. Cordis Corp., 536 F.3d 1311 (Fed. Cir. 2008); 2008 LEXIS 17542.)).

by Vincent J. Allen

It is becoming more and more common for technology business owners to be faced with patent infringement suits filed by a non-practicing entity (NPE), an entity that does not manufacture or sell the product covered by the patent.  Defending a patent infringement suit can be very expensive, and for a small company, can threaten its very existence.  Historically, patent litigation insurance has not been readily available.  But now, patent aggregator RPX and insurance company Aon Risk Solutions have teamed up to offer patent litigation insurance for suits brought by non-practicing entities

By Vincent J. Allen

The America Invents Act significantly expands the “prior commercial use” defense for patent infringement cases.  The defense allows a defendant to avoid patent infringement by proving that the defendant used the patented subject matter at least one year before the earlier of a) the effective filing date of the patent-in-suit or b) the date the invention was disclosed to the public as envisioned under the new Section 102(b).  The defense previously only applied to business methods, but now includes the entire gamut of patentable subject matter.

By Vincent J. Allen

A few years ago, a plaintiff could file suit for patent infringement in any jurisdiction where infringing products were sold.  Because of its short time to trial and plaintiff-friendly jury pools, the Eastern District of Texas became the forum of choice for many plaintiffs.  But in recent years, the courts have clamped down on the liberal venue rules by requiring the transfer to a forum that is “clearly more convenient” in cases where the only connection to the venue is the fact that infringing products are sold there.

by Vincent J. Allen

In a decision earlier this year having ramifications in numerous areas of the law in which “knowledge” must be proven, the U.S. Supreme Court applied the doctrine of willful blindness to satisfy the knowledge element for a claim of active inducement of patent infringement. Although the willful blindness doctrine has been well established in criminal law and adopted by every federal court of appeals but one, the Global-Tech Appliances decision marks the first time the Court has approved the doctrine.

By Vincent J. Allen

The Federal Circuit’s Bon Tool decision in late 2009 dramatically increased the number of false patent marking cases filed last year.  Historically, the relatively obsure patent marking statute had been interpreted to allow for a penalty of up to $500 for each decision to mark an unpatented product.  Consequently, there were only a handful of false marking suits pending at any given time.  Times have changed.  The Bon Tool decision opened the flood gates for false marking claims because of the dramatic increase in potential damages to the plaintiff.  A plaintiff in a false marking suit can now recover up to $500 per item sold.  Forest Group Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009).

Part 2: The Jury (It’s Not a Jury of Your Peers)

By Chris Kilgore

In the first part of this series, we noted the particular challenge of trying a complex or technical case before a jury.  This is an important consideration because, even though trial may not be the end game, litigation matters can sometimes take on a life of their own.

The phrase “jury of your peers” arises from the Magna Carta (1215).  At the time, it meant persons who actually knew the parties, the facts, or had the duty to discover the facts.  The concept of the jury trial as it was understood by the Founding Fathers was intended as another check on government power.  While the jury may work well in that role, the advent of tort litigation around the turn of the 20th Century and cases of ever increasing complexity has put new strains on the efficacy of the jury system.

The conventional wisdom is that the number of lawsuits filed rises while the number of transactions fall in a down economy.  When times are good,

By Vincent J. Allen

In 1871, the Supreme Court established the standard for proving design patent infringement in Gorham Manufacturing Company v. White.The design patent in Gorham covered the ornamental features of forks and tablespoons. The Supreme Court explained that the appearance of an article may increase its “salable value.”  The test of identity of design “must be sameness of appearance, and mere differences of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity.”  Based on this rationale, the Court outlined the “ordinary observer” test that is still used by courts today in design patent infringement cases: