A recent decision by the International Trade Commission (“ITC” or the “Commission”) improves intellectual property holders’ ability to prove that they have a “domestic industry” and obtain relief for infringement from the Commission. Specifically, the ITC ruled that investments in “non-manufacturing activities,” including engineering and research and development activities related to a domestic industry protected article under section 337(a)(3)(C), can support a finding of domestic industry under sections 337(a)(3)(A) or (B)—the sections traditionally associated with manufacturing. The Commission also ruled that manufacturers could use certain investments in components and contract employees to support a finding of domestic industry. The Commission’s opinion removes uncertainty for companies relying upon research and development activities and expenditures to establish a domestic industry. It also helps parties relying on manufacturing expenses to establish a domestic industry.
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.
In the time since the Federal Circuit issued its Vanda Pharma decision in April, Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. 887 F.3d 1117 (Fed. Cir. 2018) the US Patent and Trademark Office (USPTO) has issued two memos to the examining corps which provide increased clarity and predictability in the determination of patent eligibility which is more good news for the eligibility of claims relating to diagnostic or similar tests utilized in treating patients. If you’re not familiar with the Vanda Pharma decision, and want more detail, see my previous post HERE.
According to the Eastern District of Texas, no. In our continued post-TC Heartland coverage, for the purpose of establishing venue, courts typically will decline to treat the place of business of one corporation as the place of the business of the other, even when the two are related, so long as a formal separation of entities is preserved.
A recent order from the Northern District of California provides some succinct guidance on the relevancy of discovery concerning litigation funding. In Space Data Corp. v. Google LLC, 5-16-cv-03260, the court denied Defendants Google and Alphabet’s motion to compel discovery as to potential litigation funding allegedly considered by Plaintiff Space Data.
Space Data sued Google and its patent company Alphabet over Google’s Project Loon – an Internet-beaming balloon initiative. Space Data alleged that Google unlawfully used confidential information and trade secrets disclosed during their partnership discussion in 2007 and claimed that Google infringed three of Space Data’s U.S. patents.
According to a recent decision from the Southern District of New York, no. In our continued post-TC Heartland coverage, the court in CDX Diagnostic, Inc. v. U.S. Endoscopy Group, Inc. clarified that a storage unit does not qualify as a regular and established place of business. Specifically, retrieving materials from a storage unit does not qualify as actually engaging in business activity. While a storage unit is of course a physical place in the district, the plaintiffs failed to meet their burden to prove that the defendant engaged in any business in or from the storage unit.
A recent opinion from the District of New Jersey is a cautionary tale for patent practitioners regarding conduct during patent prosecution that can be framed as bad faith. This can become an expensive misstep during subsequent litigation. In Howmedica Osteonics Corp. v. Zimmer, Inc. et al., 2-05-cv-00897, the court granted defendant Zimmer, Inc.’s (“Zimmer”) motion for over $13 million in attorney fees and costs under 35 U.S.C. § 285 over plaintiff Howmedica Osteonics Corp.’s (“Howmedica”) argument that its actions did not support a finding of an exceptional case.
A recent order from the Northern District of California provides patent practitioners interesting guidance regarding conduct during licensing discussions—and may be a cautionary tale to potential licensors engaged in efficient infringement. In Finjan, Inc. v. SonicWall, Inc., 5-17-cv-04467, the court denied the defendant SonicWall’s motion to dismiss the plaintiff Finjan, Inc.’s (“Finjan”) willfulness allegations. Finjan alleges both that SonicWall infringes ten of Finjan’s patents covering behavior-based and antimalware security, and also that SonicWall’s infringement was willful because it engaged in insincere licensing discussions in order to intentionally delay the infringement litigation.
In another interesting development in our ongoing coverage of the application of the TC Heartland patent venue standard by lower courts, the District Court for the Western District of Texas recently determined that when a parent company ratifies its subsidiary company’s place of business, it can be considered a “regular place of business” for purposes of establishing proper venue. In Board of Regents, The University of Texas System, and Tissugen, Inc.v. Medtronic PLC, Medtronic, Inc., and Tyrx, Inc., Cause No. A-17-CV-0942-LY (May 17, 2018 W.D. TX), it was undisputed that neither defendant was incorporated in the Western District of Texas. As such, the Court looked to whether either business maintained a regular and established business within the district, and concluded that Medtronic did.
A California jury recently awarded Apple $538.6 million in total damages for patent infringement by Samsung. This is the latest development in the patent battle between smartphone industry titans that began in 2011 and took another step towards completion. The verdict arrived after five days of deliberations and seven months after Judge Koh ordered a second trial to determine appropriate damages in light of the U.S. Supreme Court decision in December of 2016. The jury attributed $533.3 million for the infringement of Apple’s design patents and $5.3 million for infringement of Apple’s utility patents.