News & Analysis as of

Bad Faith Patents

Axinn, Veltrop & Harkrider LLP

Judge Gilstrap: For Implementers of SEPs, the Penitent Will Pass

According to Judge Gilstrap in the Eastern District of Texas, obligations to negotiate under fair, reasonable, and non-discriminatory (FRAND) terms apply not only to standard essential patent (SEP) holders but to implementers...more

Mintz - Intellectual Property Viewpoints

It Takes Two to Tango: Gilstrap Frames Implementer Holdout as Bad Faith Justifying “Suspension” of SEP Licensing Discussions

Innovators have long insisted that licensing discussions over standard essential patents (SEP) are one sided: implementers often “hold out” in bad faith by delaying discussions for as long as possible. The theory driving this...more

McDermott Will & Emery

CEO Punches Ticket and Avoids Sanctions Based on Receiving Confidential Documents

McDermott Will & Emery on

Addressing protective order violations, the US Court of Appeals for the Fifth Circuit largely vacated a district court’s sanctions order. The Court explained that sanctions must comply with due process, barring parties from...more

Irwin IP LLP

Spy Scheme Costs Plaintiff Its Patent Infringement Claims - Site 2020 Inc. v. Superior Traffic Servs., LLC, No. CV 21-63-M-DLC-KLD...

Irwin IP LLP on

Clever covert spy activities during active litigation may backfire.  Recently, Magistrate Judge Kathleen L. DeSoto recommended dismissing all of Site 2020’s patent infringement claims against Superior Traffic with prejudice...more

Mintz - Intellectual Property Viewpoints

Judge Alsup Certifies Two Hot Button Issues on Standard for Pleading Willful Infringement for Interlocutory Appeal to the CAFC

On March 16, 2022, U.S. District Judge William Alsup of the Northern District of California certified two of the hot button issues splitting district courts on the standard for pleading willful infringement (see order),...more

Weintraub Tobin

Federal Circuit Clarifies Standards for Willful Patent Infringement and Enhanced Damages

Weintraub Tobin on

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...more

Knobbe Martens

Enforcing a Patent Known to be Invalid Can Trigger Attorneys’ Fees

Knobbe Martens on

ENERGY HEATING, LLC v. HEAT ON-THE-FLY, LLC - Before Moore, Prost, and Stoll.  Appeal from the U.S. District Court for the District of North Dakota. Summary: Enforcing a patent with knowledge that it is invalid can...more

Fox Rothschild LLP

Federal Circuit Clarifies Standards for Willful Infringement and Enhanced Damages While Reinstating, Affirming-in-Part and...

Fox Rothschild LLP on

By Memorandum Opinion entered on appeal from the United States District Court for the District of Delaware in SRI International, Inc. v. Cisco Systems, Inc., Case 20-1685 (Fed. Cir. September 28, 2021), the Federal Circuit...more

Knobbe Martens

Willful Infringement Does Not Require “Wanton, Malicious, and Bad-Faith” Behavior

Knobbe Martens on

SRI INTERNATIONAL, INC. v. CISCO SYSTEMS, INC. Before LOURIE, O’MALLEY, and STOLL. Appeals from the United States District Court for the District of Delaware. Summary: Applying the proper test for willful...more

Vinson & Elkins LLP

Western District Of Texas Sanctions Patent Infringement Defendant For Discovery Abuse And Misconduct

Vinson & Elkins LLP on

On April 6, 2021, the Western District of Texas ordered that preliminary injunction relief was appropriate to prevent irreparable harm to the plaintiff due to the defendant’s “discovery abuse and related misconduct.”...more

Akin Gump Strauss Hauer & Feld LLP

Enjoining a Patentee from Communicating Its Patent Rights Requires a Showing of Bad Faith

The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) recently reversed a preliminary injunction enjoining a patentee from making allegations of patent infringement and threatening litigation against...more

Patterson Belknap Webb & Tyler LLP

Judge Ramos Finds “Bad Faith” Enforcement of a Patent is Not Patent Misuse

On March 23, 2020, U.S. District Court Judge Edgardo Ramos granted a motion to dismiss counterclaims and strike affirmative defenses because they were not plausible and did not meet the heightened pleading requirements of...more

Mintz - Intellectual Property Viewpoints

Counterproductive and Cost-Increasing Litigation Tactics Are Objectively Unreasonable in Section 285 Attorney Fee Award Analysis

Nearly six years ago, the Supreme Court in Octane Fitness v. ICON Health & Fitness promulgated a “totality of the circumstances test” for awarding reasonable attorney fees to the prevailing party in exceptional cases under 35...more

McDermott Will & Emery

IPR Time-Bar Clock Starts Ticking on Service of Complaint, Even if Deficient

McDermott Will & Emery on

In a precedential decision, the Patent Trial and Appeal Board (PTAB) dismissed a petition for inter partes review (IPR), finding that the one-year time limit for filing an IPR petition under 35 USC § 315(b) is triggered even...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - April 2019: Petitioners Can Change RPI after 315(b) Bar Date

The PTAB added three new precedential decisions following an older precedential decision directed to acceptable circumstance for a petitioner to change the real party in interest during trial - even after a bar date has...more

Wilson Sonsini Goodrich & Rosati

Massachusetts State Senator Files Second Attempt at Bill to Address Bad Faith Patent Infringement Assertions

On Wednesday, January 16, 2019, Massachusetts State Senator Eric Lesser introduced Bill S.D. 1007 (S.D. 1007) which provides for legal actions and recovery from entities that allege infringement in bad faith against...more

Proskauer - New England IP Blog

Gun Trigger Patent Lawsuit Misfire Does Not Warrant “Exceptional Case” Finding

After a lengthy and circuitous patent proceeding between plaintiff O.F. Mossberg & Sons (“Mossberg”) and defendants Timney Triggers, LLC and its related manufacturing entity (collectively, “Timney”), which ultimately resulted...more

Knobbe Martens

Gust, Inc. v. Alphacap Ventures LLC

Knobbe Martens on

Federal Circuit Summary - Before Wallach, Linn and Hughes. Appeal from the United States District Court for the Southern District of New York. Summary: In determining whether to award sanctions under 28 U.S.C. § 1927,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2018

Gust, Inc. v. AlphaCap Ventures, LLC, Appeal No. 2017-2414 (Fed. Cir. Sept. 28, 2018) In an appeal from a district court decision awarding fees pursuant to 28 U.S.C. § 1927, the Federal Circuit reversed. The decision makes...more

Mintz - Intellectual Property Viewpoints

Evidence of Bad Faith Patent Prosecution Can Support an Award of Attorney Fees

A recent opinion from the District of New Jersey is a cautionary tale for patent practitioners regarding conduct during patent prosecution that can be framed as bad faith. This can become an expensive misstep during...more

Mintz - Intellectual Property Viewpoints

Insincere Licensing Discussions Can Support a Willful Infringement Claim

A recent order from the Northern District of California provides patent practitioners interesting guidance regarding conduct during licensing discussions—and may be a cautionary tale to potential licensors engaged in...more

Schwabe, Williamson & Wyatt PC

Supreme Court and Precedential Federal Circuit Patent Cases

In SCA v. First Quality Baby Products, the Supreme Court holds that laches should not be available as a defense in patent cases, refusing to concur with the Circuit’s en banc holding that the Patent Act’s 6-year limitation on...more

Patterson Belknap Webb & Tyler LLP

Judge Cote Holds Attorneys Liable for Trying to Keep a “Baseless” Case in E.D. Tex. that Sought Nuisance Payments from Numerous...

On December 8, 2016, District Judge Denise Cote (S.D.N.Y.) granted defendants Gust, Inc.’s (hereinafter, “Gust”) motion for attorneys’ fees and costs under 35 U.S.C. § 285 and 28 U.S.C. § 1927 against plaintiff AlphaCap...more

Proskauer - New England IP Blog

Rising Tide of State-Enacted Patent Reform

It started with Vermont in 2013. Since then, over half the states have enacted legislation aimed at curbing patent infringement suits from non-practicing entities. Now, the band may add another member: Massachusetts....more

Foley Hoag LLP

Patent Troll Watch - States Are Pushing Patent Trolls Away from the Legal Line

Foley Hoag LLP on

Oregon enacts statute to make improper patent license demands a violation of its unlawful trade practices law - In March 2013, Senate Bill 1540 was signed into law by the governor of Oregon. The law makes patent...more

48 Results
 / 
View per page
Page: of 2

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide