Northern District of California Local Rules for Patent Cases
Roderick M. Thompson of Pillsbury Winthrop Shaw Pittman LLP
The United States District Court for the Northern District of California adopted new Local Rules 16-6 through 16-.
Avoiding a Jury Trial on the Issue of Infringement Under the Doctrine of Equivalents
Alex Chartove of Akin Gump Strauss Hauer & Feld LLP
This article provides a detailed discussion of the Sage Products case and the CAFC's decision. It also describes some of the issues which companies should consider when evaluating the potential risks of a jury trial on the issue of infringement under the doctrine of equivalents.
Warning: The Federal Circuit Has Determined That Your Notice of Infringement May Be Dangerous to Your Venue
Carl G. Love of Pillsbury Winthrop Shaw Pittman LLP
Recent decisions by the U.S. Federal Circuit Court of Appeals may dictate a change in the customary practice of gi.
An Overview of Section 337 Actions in the ITC
Bryan Farney of Brobeck Phleger & Harrison LLP
This paper includes a brief overview of the procedures involved in instituting and prosecuting an ITC investigation, followed by a discussion of the relative merits of bringing a Section 337 action in the ITC instead of the federal district courts. A review of recent case law developments related to ITC practice is then presented. Finally, key changes wrought by the 1994 Amendments to Section 337 are revisited.
Federal Circuit Abolishes Negative Inference from Willful Patent
James M. Smith and Daniel B. Pollack of Squire, Sanders & Dempsey L.L.P.
In a landmark decision, the Court of Appeals for the Federal Circuit overruled a long-standing precedent relating to willful patent infringement. In Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmBH v. Dana Corp., 383 F.3d 1337, 1341 (Fed. Cir. 2004) ("Knorr-Bremse"), the Federal Circuit abolished the negative inference that an opinion of counsel was or would have been unfavorable if an alleged infringer fails to produce or obtain an exculpatory opinion of counsel in response to a charge of willful patent infringement.
Your Product's Patent Has Been Infringed -- Now What?
James J. Foster of Wolf, Greenfield & Sacks, P.C.
If you have patents covering your products (and these days, you probably have a bunch), you know how important it is to protect them to maintain your competitive position. Thus, if you hear through the grapevine that a competitor is poised to come out with a product that might infringe on one of your patents, or even worse, that your customers have already started buying his product, your gut instinct might be to quickly fire off a letter or a phone call threatening him with a ruinous lawsuit.
Doctrine of Equivalents Revitalized by Federal Circuit En Banc
G. Paul Edgell of Pillsbury Winthrop Shaw Pittman LLP
The Court of Appeals for the Federal Circuit announced in Hilton Davis Chemical Co. v. Warner-Jenkinson Co., Inc.,.
The Right Prescription
Mitratech
Pfizer's Global Security department, one of 11 different practice groups within the pharmaceutical company's worldwide Legal Division, had a problem. Charged with protecting the company's products from fraudulent imitations, thefts and other threats, Global Security needed an efficient system for tracking suspected counterfeit and stolen drugs, while expediting lab testing, ensuring accurate chain-of-custody documentation and automating appropriate - and secure - information sharing.
U.S. Appellate Court to Decide Whether Foreign Patent Claims Are in Play
Michael N. Berg and Alisa M. Cahan of Torys LLP
Has the trend toward a one-stop shopping world pervaded our legal system, and specifically the patent community? We are well aware of recent globalization and the accompanying expansion of cross-border research and development, outsourcing to manufacturing facilities abroad and blossoming international trade. Multinational corporations depend upon revenue generated by these activities, which are often the subject of patents granted by the United States , Canada and other countries.
Managing the Intellectual Property Lawsuit
Roderick M. Thompson of Farella Braun + Martel LLP
It is easy to say that successful resolution of Intellectual Property disputes .
Judge Overturns Record $1.5 Million Microsoft Verdict
Robert J Ambrogi and IMS Expert Services
Expert testimony proved to be the linchpin in a federal judge's Aug. 6th decision to set aside the largest-ever damages award in a U.S. patent case.
The Looming Crisis Over the Research Use Exception To Patent Infringement: What Madey Taught Duke University
Stephen B. Maebius and Harold C. Wegner of Foley & Lardner LLP
Madey v. Duke promises to set off a lively debate about the direction of research at federally funded universities and in particular the role of patents both to protect the intellectual property wealth of such institutions but also the very right to continue to function as research institutions, free from third party patent problems. The confirmation by the court that a nonprofit or other university enjoys no special privilege or experimental use exemption to conduct testing or research guarantees that in the 108th Congress there will be a reconsideration of earlier attempts to provide a statutory research exemption.
Reviewing Competitor's Patents: Are There Risks?
Vera M. Elson and Robert P. Feldman of Wilson Sonsini Goodrich & Rosati
The article discusses the implications of having advance knowledge of your competitors patents.
Antitrust Implications of Patent Settlements: Balancing Patent Policy, Antitrust Law, and the Practical Limits of Litigation
Michael K. Friedland of The Federalist Society
In a perfect world, all patents would be valid and none infringed. In a near-perfect world, a mechanism would exist to rapidly and efficiently determine whether a patent is valid and infringed. We live in neither world.
Federal Jurisdiction Extended Over State Business Tort Action Claims
Ernest E. Helms of Dykema Gossett PLLC
The United States Court of Appeals for the Federal circuit in Hunter Douglas, Inc. v. Harmonic Design, Inc. recentl.
Supreme Court Upholds Doctrine of Equivalents
G. Paul Edgell of Pillsbury Winthrop Shaw Pittman LLP
The Supreme Court of the United States, in the eagerly awaited decision in Warner-Jenkinson Co., Inc. v. Hilton Da.
Stanford Biotech Strategies Seminar. Seminar Summaries of Speakers Elaine Levin and Lawrence Sung, Ph.D. of Preston Gates & Ellis.
K&L Gates LLP
Elaine Levin gave an overview of problems facing small biotech companies. Lawrence Sung, Ph.D., provided an update on inventorship/ ownership considerations and the common law ÃÂresearch useÃÂ exemption.
The Impact of Non-Traditional Patent Litigation on Cost/Benefit Analysis
J. Steven Baughman of Ropes & Gray LLP
When a company receives a cease-and-desist letter, the most dreaded question that intellectual property counsel must answer is, "What is this patent suit going to cost us?" While a traditional cost-benefit analysis may be used to calculate the settlement value of a case, the evolution of unorthodox twists in traditional patent litigation may affect your answer and change the valuation of the case and the possibility of settling at an early stage.
Put It in Writing: Records of Technological and Business Developments Can Come in Handy in A Patent Infringement Suit, Even If The Company Keeping The Records has No Intention of Filing for A Patent
Michael J. Sacksteder of Fenwick & West LLP
The otherwise unsupported word of even a large number of witnesses is usually insufficient to invalidate an issued patent based on prior sale, public use or invention of the product or method claimed in the patent. Something more tangible is needed, and this requirement can create frustrating scenarios for accused infringers.
Global Patent Considerations for the 21st Century
Dykema Gossett PLLC
There was a time when all U.S. business competitors and markets were domestic, and we only needed to protect our te.
Judicial Estoppel May Arise From Mere Administrative Filings
Carl G. Love of Pillsbury Winthrop Shaw Pittman LLP
Remcor Products Co. v. Scotsman Group Inc., 32 USPQ2d 1273, 1280-82 (N.D. Ill. 1994) In a recent U.S. case ther.
What Are My Chances? From Idea Through Litigation
Benjamin Hershkowitz of Kenyon & Kenyon LLP
The next time someone asks - "what are my chances?" - chances are you may now have an answer.
Intellectual Property Audits: A More Diligent Approach
Randy J. Pritzker of Wolf, Greenfield & Sacks, P.C.
Conducting an intellectual property audit is an important business process. It can insure a company's IP assets are being adequately identified, protected, and enforced; provide information to potential investors; and inform a potential licensee or acquirer of an IP asset's value. In addition, an IP audit can result in company executives adopting or changing an approach toward IP that adds value and reduces risk to the company.
Festo Revisited
Townsend and Townsend and Crew LLP
In a continuing drama concerning the rights of inventors to protect their creations by employing the doctrine of equivalents, the Federal Circuit applied the flexible standard mandated by the U. S. Supreme Court last year. This is our first opportunity to see the application of the Supreme Court's newly created rebuttal criteria governing how patent holders can use the doctrine of equivalents as a method of finding patent infringement.
Patent Law  "Reasonable Apprehension" After Receipt of a Cease-and-Desist Letter  Grounds for Declaratory Judgment Action
Anthony A. Tomaselli of Quarles & Brady LLP
The drafter of a cease-and-desist letter must carefully craft the language in the letter to put the recipient on actual notice of patent infringement without giving the recipient a "reasonable apprehension" of litigation.