Sandra Badin is Special Counsel based in our Boston office. She focuses her patent practice on appeals before the Federal Circuit and high-priority motions in the federal district courts and the U.S. International Trade Commission.  Sandra has represented clients in many different technology fields with patents covering radio frequency transceivers, graphics processing units, LCD displays, medical records processing systems, electronic point-of-sale systems, high-density plasma cutting torches, dental materials and processes, specialty fabrics, and financial and business methods.

Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components of the patented invention exported from the United States.

In WesternGeco v. Ion Geophysical, issued today, the Court explained that the purpose of the damages provision in the Patent Act is to put patent owners in as good a position as they would have been in if the infringement had never occurred. Infringement under the section 271(f)(2) of Patent Act includes exporting components of a patented invention for assembly and use abroad in a manner that would infringe the patent if such assembly and use had occurred in the United States. Making patent owners who have suffered such infringement whole means allowing them to recover foreign lost profits, the Court said.

Continue Reading The Patent Act Allows for Full Compensation for All Forms of Infringement

As we noted in our blog post last week, the USPTO held its “Chat with the Chief on SAS” webinar on April 30, 2018, to advise the public on the implications of the Supreme Court’s opinion in SAS Institute for practice before the Board going forward.  The panelists were Chief Judge David Ruschke, Vice Chief Judge Tim Fink, and Vice Chief Judge Scott Weidenfeller.

The panelists noted that out of approximately 800 cases currently pending before the Board, about 18-20% have been instituted on fewer than all challenged claims.  (The percentage of petitions instituted on only a subset of all challenged grounds was not available as of the date of the webinar.)

Continue Reading Chat with the Chief on <i>SAS Institute</i>

On Tuesday, the U.S. Supreme Court issued two important patent law opinions that relate to the inter partes review procedure introduced by the America Invents Act: Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, which upholds the constitutionality of inter partes review, and SAS Institute, Inc. v. Iancu, which requires the Patent Trial and Appeal Board to adjudicate the validity all patent claims challenged in a petition for inter partes review if the Board decides to adjudicate the validity of any claim challenged in that petition.  Yesterday, the PTO issued a memo describing how pending trials will be conducted and how new petitions will be addressed in light of SAS Institute, but important questions remain.

Continue Reading Two Supreme Court Patent Opinions and a Memo from the PTO

keyboard_566705419In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges. Some observers have concluded that software patents are no longer worth pursuing. We disagree. Although there are real challenges, and patents on some software or other computer-implemented inventions may now be quite difficult (or even impossible) to obtain or enforce, a well-written and well-prosecuted patent application can circumvent many of these obstacles.

To read our full advisory on software patent eligibility, please click here.

Over the course of the past year, there have been two notable decisions issued by the Federal Circuit and the International Trade Commission that impact the scope and nature of the remedies available for the infringement of standard-essential patents (SEPs), and as a result, continue to shape the incentives of technology innovators to contribute their patented inventions to standards-setting bodies.

On December 3, 2015, the Federal Circuit issued its much-awaited decision in Commonwealth Scientific and Industrial Research Organization (CSIRO) v. Cisco Systems, Inc., providing meaningful guidance on a number of open questions pertaining to the calculation of damages for the infringement of SEPs.  In Certain Industrial Control System Software, Systems Using Same, and Components Thereof, Inv. No. 337-TA-1020 (the 1020 Investigation), the Commission was asked to invoke the Early Disposition Pilot Program to direct the presiding Administrative Law Judge to determine whether the asserted patents are standard-essential and therefore subject to mandatory licensing obligations.

To read the additional details about these decisions and their impact, please click here.

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgEarlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101.  Both patents—the ’050 and the ’610—are directed to filtering email or file content.  (IV does not challenge the invalidation of a third patent, which was directed to receiving, screening, and distributing email.)  The petition echoes concerns raised by clients, courts, and the patent bar about the growing uncertainty about what is—and what is not—patent eligible, especially in the area of software patents.  Identifying two emerging fault lines in the court’s evolving section 101 jurisprudence, IV urges the full court to bring much needed doctrinal clarity and methodological consistency to the patent eligibility analysis. Continue Reading Intellectual Ventures Petitions Federal Circuit for Full Court Review

Faced with the growing problem of efficient infringement and the difficulty of obtaining adequate protection from the courts, US owners of standard-essential patents need to develop creative strategies to protect the value of their rights.

In a comprehensive article, published as a feature in Intellectual Asset Management magazine, several Mintz Levin attorneys discuss the extent of the growing problem, the courts’ focus on “patent hold-up, not hold-out” (including analysis of Microsoft v. Motorola, CSIRO v. Cisco, Certain 3G Mobile Handsets, and Certain Wireless Devices with 3G and/or 4G Capabilities), the implications for moving forward, and some thoughts on strategy to overcome efficient infringement.  IAM | Sept/Oct 2016: “Efficient infringement and the undervaluation of standard-essential patents

A sidebar in the article points out that in dealing recently with the issue of patent hold-out, European courts appear to be demonstrating a better understanding of the issue and the threat it poses.

The Supreme Court has made it easier for patent owners to prove willful infringement and entitlement to enhanced damages.  In a unanimous opinion issued Monday in a pair of cases decided together, Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corporation v. Zimmer, Inc., the Court did away with the Federal Circuit’s “unduly rigid” test for proving willfulness, which had allowed even “wanton and malicious” infringers who intentionally set out to steal the patent owner’s ideas and business to evade liability for enhanced damages if clever counsel were later able to articulate non-trivial—even though unsuccessful—infringement or invalidity defenses.

To read our full client alert on the decision, please click here.

patent license agreementLast month, the Ninth Circuit Court of Appeals issued a pivotal decision in Microsoft v. Motorola regarding the licensing of standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms. Mintz Levin attorneys Richard G. Gervase, Jr., Bruce D. Sokler, Sandra J. Badin, and Michael T. Renaud critically assess the Ninth Circuit’s decision in Mintz Levin’s Intellectual Property Alert titled Ninth Circuit Upholds Judge Robart’s RAND Determinations in Microsoft v. Motorola. The Court endorsed the lower court’s methodology for determining the RAND rate, including its determination of the relevance of patent pools to SEP licenses. In so doing, the Court discussed the evidence necessary to determine whether particular RAND commitments have been breached and the proper measure of damages of such breaches. Based on its review of the record evidence, the Court upheld the jury’s finding that Motorola breached its duty of good faith and fair dealing when it sought injunctive relief for Microsoft’s alleged infringement of Motorola’s SEPs, as well as the jury’s $14.5 million damages award for that breach. While the decision contributes to the evolving jurisprudence of SEP enforcement, its singular focus on concerns over patent hold-up, to the exclusion of any concern over reverse patent hold-up, will only add to the growing pressure on innovators to opt out standard setting activities.  In the long run, such an outcome bodes ill for the health and vigor of the American innovation economy.

 

In a unanimous full court decision issued yesterday, the Federal Circuit availed itself of “the opportunity to revisit the § 271(a) question” left unanswered by the Supreme Court last year, and outlined “the governing legal framework for direct infringement” of method claims. It held that a party can be liable for direct infringement of method claims under 35 U.S.C. § 271(a) “in two sets of circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.”

With respect to the “direct or control” prong, the Court said that it “continue[s] to consider general principles of vicarious liability.”  Under those principles, “an actor is liable for infringement under § 271(a) if it acts through an agent (applying traditional agency principles) or contracts with another to perform one or more steps of a claimed method.”  But in addition to liability based on agency or contract, the Court held that, “on the facts of this case, … liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”  (emphasis added).  In such instances, the Court said, “the third party’s actions are attributed to the alleged infringer such that the alleged infringer becomes the single actor chargeable with direct infringement.”  Whether a single actor has directed or controlled the actions of a third party is a question of fact reviewable on appeal for substantial evidence. Continue Reading In Akamai v. Limelight, Unanimous Federal Circuit Outlines Framework for Direct Infringement of Method Claims