infringement

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By: Audrey A. Millemann

On January 22, 2014, the United States Supreme Court decided that a patent owner has the burden of proving infringement in an action filed by a licensee for a declaratory judgment of noninfringement. This case, Medtronic, Inc. v. Mirowski Family Ventures, LLC, 2014 U.S. LEXIS 788 (2014), reversed a Federal Circuit Court of Appeals decision holding that in such a case, the burden of proof shifts to the licensee to prove it did not infringe.

In 1991, Medtronic and Mirowski entered into a license. Medtronic made medical devices, including cardiac devices, and Mirowski owned patents covering heart simulator implants. The license provided that if Mirowski believed that a new product of Medtronic was covered by the patents, Mirowski would give notice to Medtronic. Medtronic could then choose one of three options: agree to pay royalties for the new product, pay royalties and also challenge Mirowski’s finding of infringement, or not pay royalties, when which would allow Mirowski to terminate the license and sue Medtronic for patent infringement. The parties later modified the license to allow Medtronic to pay royalties into an escrow account if it decided to challenge Mirowski’s finding of infringement, with the winner receiving those royalties.Continue Reading Patent Owners have Burden of Proof in Declaratory Judgment Actions

By: James Kachmar

A recent decision in the case Jobscience, Inc. v. CVPartners, Inc. (N.D. Cal. Jan. 9, 2014) shows the interplay between the various theories of intellectual property claims. There, the plaintiff asserted claims for both copyright infringement and trade secret misappropriation arising out of the alleged theft of its software code. The court was required to deal with the issue of whether plaintiff’s trade secret claim was preempted by its claim for copyright infringement.

Jobscience develops and licenses recruiting software applications, including its JS 2 Jobscience Recruiting Package. In 2010, Jobscience entered into a master agreement with defendant CVPartners that contained an End User License and Agreement, which provided the defendant with a license to use plaintiff’s job recruiting software application. The license was renewed in 2011.Continue Reading Copyright Preemption and Its Interplay with Trade Secret Misappropriation

By Audrey A. Millemann

            The Federal Circuit has loosened the standard for recovering attorneys’ fees in patent infringement cases, making it easier for winning defendants to obtain their fees from plaintiffs. 

            The case is Kilopass Technology, Inc. v. Sidense Corp. (Fed. Cir. Dec. 26, 2013), 2013 U.S. App. LEXIS 25671. Kilopass and Sidense were competitors in the market for memory cells used in transistors. Kilopass obtained several patents on its technology. After reviewing a published patent application of Sidense for its memory cells, Kilopass embarked on an interesting course of conduct.

            First, Kilopass engaged counsel to determine whether Sidense infringed Kilopass’ patents. Based on the product described in Sidense’s patent application, Kilopass’ counsel believed that there might be an infringement case, and sent Sidense a letter inviting Sidense to license Kilopass’ patents or explain why Sidense’s products did not infringe Kilopass’ patents. Sidense replied with a specific explanation of why its products did not infringe Kilopass’ patents. Sidense also offered to subject its products to a confidential infringement analysis by a third party expert to prove its position. Kilopass then obtained a diagram of Sidense’s product and provided it to Kilopass’ counsel.  Counsel then concluded that Sidense had designed around Kilopass’ patents and that its products probably did not literally infringe the patents. In response, Kilopass retained a second counsel to analyze infringement. The second counsel made a preliminary finding that Sidense’s products probably did not literally infringe the patents, but might infringe under the doctrine of equivalents, and said that further investigation was needed to confirm this. Kilopass did not conduct further investigation with this counsel, but instead engaged a third counsel to analyze infringement. Then, based primarily on Kilopass’ own engineer’s findings, Kilopass concluded that Sidense infringed under the doctrine of equivalents. 

 Continue Reading Patent Infringement: Attorneys’ Fees A Little Easier to Get

 By: Audrey A. Millemann     

 

      In Seven Arts Filmed Entertainment, Ltd. v. Content Media Corp. PLC, 2013 US App. LEXIS 22517 (9th Cir., November 6, 2013), the Ninth Circuit Court of Appeals decided an issue of first impression in this circuit: whether a claim of copyright infringement based on disputed ownership would be time-barred if a free standing ownership claim was also time-barred. The court held that it would. 

            This dispute has a lengthy and complicated procedural history. It was litigated for over ten years in several different cases in two countries. The copyrights in issue are for three films: “Rules of Engagement,” “An American Rhapsody,” and “Who is Cletis Tout?.” The plaintiff is Seven Arts Filmed Entertainment, a British production company, who acquired the rights in the films from its predecessor.Continue Reading Ninth Circuit: Watch Out for Statute of Limitations for Copyright Infringement

by Jeff Pietsch

Earlier this month, the Tenth Circuit court upheld a preliminary injunction granted in favor of a manufacturer of electronics equipment against a reseller of its goods in a trademark infringement action. (Beltronics v. Midwest Inventory Distribution (10th Cir. April 9, 2009)). The reseller argued that it was able to resell the manufacturer’s goods online based on the first sale doctrine. The court, however, disagreed with this assessment and ruled that the resellers violated the manufacturer’s trademark rights because Midwest’s actions caused consumer confusion.

Continue Reading When Product Resales Constitute Trademark Infringement