This week, in an en banc decision, the Federal Circuit Court of Appeals significantly altered the law of willful patent infringement and resolved a confusing issue concerning the waiver of the attorney-client privilege. In In re Seagate Technology, LLC (August 20, 2007), the court made it harder for a patent owner to prove willful infringement. The court also clarified that the waiver of the attorney-client privilege between the client and patent opinion counsel does not result in a waiver of the privilege and the work product protection between the client and its litigation counsel.
Continue Reading Patent Infringement Willfulness Redefined and Work Product Preserved
Revisiting Brulotte and Royalty Agreements for Patented Inventions
On September 5, 2007, the Ninth Circuit issued its opinion in Zila, Inc. v. Tinnell, in which it considered the issue of a contract for payment of royalties on a patented invention in light of the 1964 U.S. Supreme Court Case, Brulotte v. Thys. In what the Court considered to be an “otherwise unremarkable case,” the Ninth Circuit found it necessary to consider “the impact and bounds of Brulotte” in determining whether Tinnell was entitled to royalty payments on a patented invention he had assigned to Zila, Inc.Continue Reading Revisiting Brulotte and Royalty Agreements for Patented Inventions
Experts and Summary Judgment
Intellectual property litigation relies heavily upon the use of expert testimony. The Ninth Circuit Court of Appeals recently analyzed the intersection of Federal Rules of Evidence, Rule 702 and the ruling in Daubert v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) (“Daubert”) concerning the admissibility of expert testimony and Federal Rules of Civil Procedure, Rule 56 for summary judgment. Stillwell v. Smith & Nephew, Inc., 482 F.3d 1187 (9th Cir. 2007). Admissibility of expert testimony must be carefully evaluated for reliability and helpfulness, but that is different than the analysis for whether a triable issue of fact is established.
No Surprise: After KSR, Federal Circuit Finds Obviousness
The first case the Federal Circuit Court of Appeals has decided under obviousness since the United States Supreme Court’s decision on April 30, 2007 in KSR International Co. v. Teleflex, Inc., 1727 S.Ct. 127 (2007) came just nine days later: LeapFrog Enterprises, Inc. v. Fisher-Price, Inc. (2007 WL 1345333; May 9, 2007).
United States patent no. 5,813,861, owned by LeapFrog, discloses a talking electronic toy or learning device called LeapPad that makes sounds in response to the user selecting a letter. The toy helps teach children phonics. Fisher-Price makes a toy called PowerTouch that performs some of the same functions as LeapFrog’s toy. The PowerTouch device includes a processor in a device that holds a special type of book used with the device, such that when the child selects a word on the page, the device audibly pronounces the word, then pronounces each phoneme of the word, and then pronounces the word again.Continue Reading No Surprise: After KSR, Federal Circuit Finds Obviousness
Everything Old is New Again – – Not
In its long awaited decision in KSR International Co. v. Teleflex, Inc., 127 S. Ct. 1727 (April 30, 2007), the United States Supreme Court has completely changed the patent landscape. The Court held that the test used by the Federal Circuit Court of Appeals to determine obviousness under 35 U.S.C. §103 is incorrect. Because of KSR, it will now be harder to get patent claims allowed and easier to invalidate issued patents.
In KSR, Teleflex sued its competitor KSR, in the Eastern District of Michigan for patent infringement of Teleflex’s patent for an automobile pedal assembly. The invention combined an electronic sensor with an automobile pedal so that the pedal position could be communicated to a computer controlling the automobile’s throttle. KSR contended that the relevant claims of Teleflex’s patent were obvious under section 103. Continue Reading Everything Old is New Again – – Not