The Importance of Contracts for Joint Infringement in Patent Cases

It has been about a year since the Supreme Court rendered its decision in Limelight v. Akamai regarding induced infringement for methods performed by two or more actors. At that time, commentators predicted that attention would shift to contract analysis for determining direct, rather than induced, infringement in these multi-actor method situations, known as joint or divided infringement.  The recent decision by the Federal Circuit in Akamai v. Limelight on remand, as well as a search of recent district court cases, shows that those predictions have now come true. In view of the importance of contract analysis for determining joint infringement, practitioners would do well to obtain contracts early in discovery to determine the strength of their positions, and practitioners drafting contracts should be mindful of potential joint infringement implications.

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Deposition Practice Tips: PTAB Guidance for Dealing With Suspected Witness Coaching

Question: What can you do when you suspect that opposing counsel engaged in inappropriate witness coaching during a PTAB deposition?  Answer: Ask the witness about the suspected off-the-record discussions and call the Board from the deposition, if necessary.

In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00434, Paper 12 (Feb. 10, 2015), in a post-conference call order, the Board addressed a party’s claim that opposing counsel engaged in inappropriate deposition witness coaching during an expert’s deposition.

At the deposition, the witness divulged certain “unexpected” testimony during cross-examination.  Prior to redirect, petitioner’s counsel and the deponent had off-the-record discussions during a half-hour recess.  On redirect, the witness made an attempt to overcome, and possibly explain away, the unexpected testimony.  The patent owner suspected that improper witness coaching occurred during recess given the witness’s ability to address the “unexpected” testimony that arose during cross.  When patent owner’s counsel questioned the witness about the nature of the off-the-record conversations, the witness refused to answer under petitioner’s claim of privilege.

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Federal Circuit Finds Disclaimer Based on “Object of Invention” Language

The Federal Circuit’s recent decision in Pacing Technologies, LLC v. Garmin International, Inc.  (No. 2014-1396) provides patent litigators with a new tool for claim construction arguments and may make patent prosecutors reconsider their drafting techniques. The Federal Circuit held that a patent specification’s characterization of disclosed “objects of the invention”—a phrase commonly used by patent drafters—effected a disclaimer in claim scope.

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Federal Circuit Limits Patent Exhaustion Doctrine for Complementary Technology

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In its 2013 decision in Keurig, Inc. v. Sturm Foods, Inc., the Federal Circuit held that a purveyor of coffee cartridges did not infringe Keurig’s coffee brewing patents because Keurig had already made an unrestricted sale of its brewing machines to end users, such that any further use of those machines was protected by the doctrine of patent exhaustion. Yet, in its February 10, 2015 decision in Helferich Patent Licensing, LLC v. The New York Times Company, et al., the Federal Circuit held that, under certain circumstances, purveyors of media content to users of handheld mobile devices could be found liable for infringement even where the mobile device manufacturers had already paid for a license under the asserted patents. In reaching this conclusion, the Federal Circuit purported to harmonize long-standing principles of patent exhaustion, but many observers will likely view the Helferich decision as narrowing the scope of the defense. In particular, the Federal Circuit has now held that in the context of complementary technology – such as a machine and one of its components, or a computer and its software – the patent exhaustion defense only operates to protect so-called “authorized acquirers” of the technology, while leaving out in the cold any third parties who provide complementary components or services that are separately patented. Continue reading this entry

Patent Eligibility Under Alice: Reliance on Lack of Routine or Conventional Use

Federal courts have continued to wrestle with the standard for patent eligibility under 35 U.S.C. § 101 set by the Supreme Court’s ruling in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). This is illustrated, for example, in two decisions – one from a district court and one from the Federal Circuit – in which the courts reached opposite conclusions on computer-related patents, showing that not all such patents are the same for purposes of determining patent eligibility.

Alice created a two-step process to determine whether a claim is directed to patent-eligible subject matter under § 101. 134 S. Ct. at 2355. First, a court must “determine whether the claims at issue are directed to [a] patent-ineligible concept[]” by evaluating the claims “[o]n their face” to determine to which “concept the claims are ‘drawn.’” Id. at 2355-56. Then, the court “search[es] for an inventive concept – i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Id. at 2355. The Supreme Court clarified that for an abstract idea to be considered patent-eligible, “the claim ha[s] to supply a ‘new and useful’ application of the idea” and that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent eligible invention.” Id. at 2357-58. Continue reading this entry