Willful patent infringement can result in enhanced, and in some case treble, damages but not in every instance. Because the standard for finding willful infringement has traditionally been lower than that for enhancing damages, a finding of willful infringement does not guarantee an award of enhanced damages.  However, a 2019 Federal Circuit opinion caused confusion, suggesting the standards were essentially the same.  SRI Int’l, Inc.  v. Cisco Sys., Inc. (“SRI II”) 930 F.3d 1295 (Fed. Cir. 2019).  In SRI Int’l, Inc.  v. Cisco Sys., Inc. (“SRI III”) (Fed. Cir. 2021), the Federal Circuit acknowledged the confusion and clarified these standards.
Continue Reading Federal Circuit Clarifies Standards for Willful Patent Infringement and Enhanced Damages

There are many requirements for obtaining a patent.  One of those is the written description requirement.  Pursuant to 35 U.S.C. §112(a), the patent must describe the invention in writing.  If the written description requirement is not met, the patent won’t be granted.  If the patent has already been issued, it can be invalidated for failure to satisfy the written description requirement.  Recently, in Juno Therapeutics, Inc. v. Kite Pharma, Inc., 2021 U.S. App. LexIs 25706 (Fed. Cir. 2021), a damage award of $1.2 billion for patent infringement was reversed for just this reason.
Continue Reading Written Description Remains Critical to Patents

How many of the lawyers out there liked hypotheticals in law school? I did not, but this case prompted me to write one!  So, for those of you who enjoy hypotheticals, here it is:

Company A, a North Carolina LLC, owns four patents.  A new company is formed, Company B, a Texas LLC.  Company B has the same corporate address in North Carolina and the same five shareholders as Company A.  Company B conducts no business activities.  About 20 days after Company B is formed, Company A assigns its four patents to Company B, with an agreement that gives Company B the rights to sue for patent infringement only in the district court for the Western District of Texas.  (And assume that the Western District of Texas is a very fast and favorable court for plaintiffs in patent infringement cases.)  About ten days after the assignment, Company B files two lawsuits for patent infringement in the Western District of Texas, alleging that the defendants sell mobile devices that use third party applications that infringe the patents.  The defendants move to transfer the cases to the district court in the Northern District of California on grounds of convenience.  They allege that the Western District of Texas is not the proper venue because most of the third-party applications were researched and developed in the Northern District of California, while none were developed in the Western District of Texas, and several witnesses and inventors were located in the Northern District of California, while none were in the Western District of Texas.  Here’s the question: Should the district court for the Western District of Texas grant the motions to transfer?
Continue Reading You Can’t Manipulate Venue!

Pfizer and BioNTech recently asked the Southern District of California to dismiss a patent infringement claim from Allele Biotechnology related to Pfizer and BioNTech’s Covid-19 vaccine.

Allele holds a patent for a fluorescent protein called mNeonGreen, which causes some cells to glow when exposed to certain kinds of light.  Allele does not claim that mNeonGreen

The answer is “Yes” because the U.S. government has waived sovereign immunity for claims of patent infringement.  This means the U.S. government can be sued for patent infringement in at least some instances.  However, special rules and certain limitations apply as explained in 28 U.S.C. § 1498, which states, in part:

(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.

As a result, patent infringement lawsuits against the United States government, are not brought in Federal district courts but rather in the Court of Federal Claims, which is a special court “authorized to hear primarily money claims founded upon the Constitution, federal statutes, executive regulations, or contracts, express or implied in fact, with the United States.”  See https://www.uscfc.uscourts.gov/.  Further, a patent owner cannot sue a federal contractor who made the allegedly infringing product or performed the allegedly infringing method, but instead, must sue the U.S. government.  Note, however, the U.S. government’s contract with the federal contractor may require the contractor to indemnify the government for liability and costs.
Continue Reading Can the U.S. Government Be Liable for Patent Infringement?