News & Analysis as of

Energy Management Patent Triggers a Covered Business Method Review

Faced with a patent threat, renewable energy and climate change companies may have a new defense option – a Covered Business Method (CBM) proceeding. Ushered in less than 2 years ago as part of comprehensive patent reform...more

The Year Ahead in Patent Law - 2015

With the advent of the America Invents Act (AIA), public perception of frivolous patent litigation, frequently surrounding cases filed by non-practicing entities (NPEs), has received increasing legislative attention. Although...more

It’s a Mad, Mad, Mad, FRAND World

Early Determinations of Fair, Reasonable, and Non-Discriminatory License Payments Have Been Anything but Consistent - When an invention claimed in a patent is essential to complying with a technical operating standard...more

Ericsson, Inc. v. D-Link Sys., Inc. Guidance on Determining Damages for Standard Essential Patents

Patents claiming inventions which must be used to comply with certain technical standards (for example, the Wi-Fi standard or standards for 3G) are referred to as standards-essential patents or “SEPs”. There has,...more

IP Newsletter - January 2015

In This Issue: - Castle Defense: Federal Circuit Reinforces Patent Damages Gate in VirnetX - Standards Patent Licensing: Always Apportionment, Sometimes Stacking - Supreme Court to Consider Good-Faith...more

Daubert Challenge to Damage Expert Denied Where Contested Matters Were for Cross-Examination and Not Proper for Exclusion

In this patent infringement action, Apple challenged the opinions of the plaintiff's damage expert on several bases, including the determination of a royalty rate based on the price of third-party applications....more

Judge Hellerstein rules on a series of motions related to infringement contentions, motions to compel documents and responses to...

Intellectual Ventures II LLC v. JP Morgan Chase & Co., et al. Case Number: 1:13-cv-03777-AKH - Judge Hellerstein resolved a number of discovery-related motions. First he found that defendants’ motion to strike...more

Supreme Court Corner: Q4 2014

KIMBLE V. MARVEL ENTERPRISES, INC. Patent Licensing - Cert. Pending - Issue: Whether the Supreme Court should overrule Brulotte v. Thys Co., which held “a patentee’s use of a royalty agreement that projects...more

Will the Supreme Court Remove Brulotte’s Shadow Over Patent Licensing?

Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that the collection of royalties after a patent’s expiration constitutes per se patent misuse. Although criticized by scholars, antitrust agencies, and the...more

Supreme Court 2014 Patent Preview

On average, the U.S. Supreme Court historically hears fewer than one patent case each term. For example, in the 14 years between 1982 and 1995, the Court decided only five patent cases. In the seven years between 1995 and...more

Supreme Court to Decide Whether License Agreements May Require Payment of Royalties After Patent Expiration

The U.S. Supreme Court Friday agreed to revisit a longstanding precedent that bars patent owners from collecting royalties after their patents have expired, even if those post-expiration payments represent compensation for...more

Antitrust and Competition Newsletter - December 2014 (Global)

For this month’s Top Stories, we are republishing two very recent Orrick Client Alerts that address an important U.S. appellate decision regarding the extraterritorial application of U.S. antitrust laws and the first U.S....more

Standards Patent Licensing: Always Apportionment, Sometimes Stacking

What is a Fair, Reasonable, and Non-Discriminatory (FRAND) royalty for a few patents essential to practicing a technical standard like WiFi and how should the jury in such a case be instructed on damages? The Federal Circuit...more

Fed. Circuit: No “Bright Line Rules” For Determining RAND Royalties; Rejects District Court Method of Computing RAND Royalty Rates

Courts in the last two years have grappled with what methodology to apply to determine a reasonable royalty rate for infringed patents subject to “Reasonable and Non-Discriminatory,” or “RAND,” encumbrances. On December 4,...more

Federal Circuit Provides Important Guidance in RAND Disputes

On Dec. 4, 2014, the Federal Circuit issued a much-anticipated opinion in Ericsson, Inc. v. D-Link Sys., Inc., Nos. 2013-1625, -1631, -1632, -1633 (Fed. Cir. Dec. 4, 2014). The panel—consisting of Judges Kathleen O'Malley,...more

Recent Developments Relating to Antitrust and Intellectual Property: Patent Assertion Entities, FRAND and Patent Misuse

On Thursday November 6, the Federal Trade Commission (FTC) announced it had reached an agreement with MPHJ Technology Investments (MPHJ), a patent assertion entity, to settle the FTC’s Complaint that MPHJ allegedly made...more

Federal Circuit Review | October 2014

Inequitable Conduct Ruling Upheld - In AMERICAN CALCAR, INC. v. AMERICAN HONDA MOTOR CO., Appeal No. 2013-1061, the Federal Circuit affirmed a finding of inequitable conduct. Calcar asserted patents related to...more

License Definition Trumps Need for Actual Infringement Finding

Cellport Systems, Inc. v. Peiker Acustic GMBH & Co. KG - In a case addressing whether royalties are due under a patent licensing agreement even if the products are not covered by the patents, the U.S. Court of Appeals...more

The Federal Circuit’s VirnetX Ruling Continues Its Focus On Requirements For Proving Patent Damages

The U.S. Court of Appeals for the Federal Circuit historically has afforded litigants substantial leeway in applying economic theory to establish damages in patent infringement cases, as long as the theories are based on...more

Misappropriation of Trade Secrets Warrants an Ongoing “Reasonable Royalty”

Sabatino Bianco, M.D., v. Globus Medical, Inc. - Comparing and contrasting Texas trade secret law to jurisprudence relating to patent infringement damages, the U.S. District Court for the Eastern District of Texas held...more

Indiana DOR Finds Economic Nexus, Disregards UPS

The Indiana Department of Revenue recently concluded that a company that earned royalty income from licensing trademarks and trade names to two of its Indiana affiliates, and had no physical presence in the state, nonetheless...more

Convenience Trumps Potentially Higher Royalties

In re Nintendo of America, Inc. - The U.S. Court of Appeals for the Federal Circuit vacated a denial of a motion to sever and transfer, directing the district court to grant petitioner’s motion because the transferee...more

Significant Uptick in Royalty and Patent Stream Monetizations (Quorum, March 2014)

One of the areas where Cadwalader has seen a significant pickup in activity levels in 2013 and early 2014 is royalty and patent stream monetizations. In 2013, we helped clients complete 10 royalty and patent monetization...more

VirnetX v. Apple: Court Grants Enhanced Ongoing Royalty Based on Disparity Between Position at Trial and Position Post-Judgment on...

On August 11, 2010, VirnetX filed suit alleging that Apple and several other defendants infringed several U.S. Patents, which generally describe a method for transparently creating a virtual private network ("VPN") between a...more

U.S. Supreme Court Holds That Patentees Bear the Burden of Proof of Infringement in DJ Actions Brought by Licensee

A patentee bears the burden of proving infringement when a licensee seeks a declaratory judgment of non-infringement, the U.S. Supreme Court has held. The ruling reversed the Federal Circuit and clarified declaratory...more

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