Frolow v. Wilson and Patent Marking

Posted in IP Ownership, Litigation, Patents, PRACTICAL IP Tips

One overlooked Federal Circuit case from the past few years is Frolow v. Wilson Sporting Goods Co., 710 F.3d 1303 (Fed. Cir. 2013). At the Federal Circuit the case provoked four different opinions - from a three judge panel - so it's worth looking at the legal issues involved. 

The main issue involved was patent marking. Wilson licensed a patent (RE 33,372) from Frolow that covered a tennis racket with certain properties of moment of inertia and center of percussion. Frolow conducted an audit regarding licensing fees and later filed suit and claimed that Wilson was not paying sufficient royalties.

Two sets of rackets in dispute were of particular interest.

  • 14 rackets that were marked but for which Wilson did not pay royalties
  • 299 rackets for which Wilson did pay royalties but that Frolow did not add to the case until later in the proceedings

Frolow appears not to have submitted much evidence that the '372 patent covered the group of 14 or the group of 299 aside from the evidence that: the group of 14 were marked and the group of 299 were explicitly covered by Wilson's royalty payments. In contrast, Wilson submitted evidence including moment of inertia tests and the like from an expert. The trial court essentially ruled that Frolow failed to submit evidence of infringement and granted summary judgment to Wilson. On appeal, Frolow argued that Wilson's marking of the group of 14 presented a fact issue. And furthermore, that Wilson's payments on the group of 299 also presented a fact issue. The Federal Circuit agreed - Wilson's marking and royalty payments created issues of fact that should have gotten Frolow beyond the summary judgment phase. Of course, Frolow could still lose at trial if Wilson had stronger evidence. 

Of note, the Federal Circuit did not adopt a rule of marking estoppel. The Federal Circuit refused to hold that Wilson's marking of the group of 299 prevented Wilson from later arguing that the group of 299 were not covered by the '372 patent. Regarding the group of 14, Wilson's marking of those patents did not prove that they were covered, but the marking could be used as one of many facts regarding infringement. 

One interesting side note (raised in Judge Newman's concurring opinion): should a licensee's marking of a product create a presumption of infringement, such that in a trial the licensee would bear the burden of proving non-infringement? Not long after Frolow the Supreme Court gave us an answer in Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. ___ (2014). There, the Supreme Court ruled that the patentee would still have to prove infringement. 

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Patent Reform Update

Posted in IP Ownership, Litigation, Patents

As anticipated, the patent reform bill: the Innovation Act has been reintroduced in the House of Representatives.  Among the included provisions in H.R. 9 are:

Cost Shifting, including Attorney Fees:  The act would require the court to award the prevailing party attorney fees and other expenses unless the judge determines “that the position and conduct of the non-prevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust."  In cases where the losing party cannot pay the award, the law would allow the court to make other interested parties liable for the attorney fee award. This provision is in stark contrast to current practice where the attorney fees are only awarded in exceptional cases.

Stay of End User/Customer Suits:  Courts are required to stay lawsuits against end users when the manufacturer of the accused product is party to the same litigation or another action on the same patent.  The end user/customer must agree to be bound by any issues finally decided as to the manufacturer.

Disclosure of Real Party in Interest: The patent owner must disclose “the ultimate parent entity” of any assignee of the patent. The plaintiff must disclose to the Patent and Trademark Office, the court, and each adverse party the identity of each of: (A) The assignee of the patent or patents at issue; ‘(B) Any entity with a right to sublicense or enforce the patent or patents at issue; (C) Any entity, other than the plaintiff, that the plaintiff knows to have a financial interest in the patent or patents at issue or the plaintiff; (D) The ultimate parent entity of any assignee identified under (A) and any entity identified under (B) or (C). The patentee will have an continuing duty to update the USPTO of any change in ownership, including ultimate parent entity within 90-days of any change. Failure to comply would result in no enhanced damages or attorney fees for the patentee in litigation and an award of attorney fees to the defendant who spent money researching the actual ownership information.

Heightened Pleading Standards: The pleading requirements for patent infringement would also be raised.  A patent holder filing an infringement lawsuit would need to show how each limitation of each asserted claim is found within each accused product or instrumentality. The patent holder would not be required to complete the analysis if the information required is not reasonably accessible.  The plaintiff must also include a description of the plaintiff's authority to enforce the patent and a description of the principal business of the plaintiff.  The plaintiff must also provide a description of licensing requirements, such as through standard setting bodies.

Discovery Limits:  The bill would limit discovery in litigation prior to a claim construction ruling to information necessary to construe the claims or resolve motions.  The Court could expand discovery limits where delay could affect the rights of a party or as necessary to prevent manifest injustice.

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Patent Applications, Small Entities and Track 1 Prioritized Examination

Posted in Patents, PRACTICAL IP Tips, Software


If you're a small entity, then you might want to consider filing your patent applications under Track 1 Prioritized Examination. The initial cost is higher...but the patents tend to issue with fewer office actions -- thus saving money in the long run.

Track 1 Prioritized Examination allows patent applicants to get a final disposition (allowance, final rejection, or abandonment) within twelve months. The fees are $4,800 per application, but only $2,400 for small entities. According to the USPTO, the average pendency from grant of a Track 1 request until the first action on the merits is 2.42 months. Average pendency from grant until final disposition is 6.05 months. So, Track 1 is certainly fast.

But Track 1 can make financial sense as well. One study found that, on average, it takes fewer office actions to reach allowance under Track 1 than under a normal patent application. Regular applications have an average pendency of 2.7 office actions until allowance. Assuming an average cost of responding to an office action of $2,600 then prosecuting a regular utility application should cost $7,020 for a small entity. In contrast, Track 1 applications have an average pendency of 1.2 office actions until allowance. Prosecuting a Track 1 application should therefore cost $5,520 for a small entity. That's about $1,500 in savings, all while getting a patent sooner.

There are some possible drawbacks to the study. The costs measured are averages and would therefore be most applicable to an entity filing many patent applications. Small entities may only be pursuing small portfolios and therefore may not see the savings that can aggregate over a large number of applications. Another possibility is that there is selection bias among Track 1 applicants. A follow up study could look at whether companies tend to send high value applications through Track 1. It's possible that the measured average pendency of 1.2 office actions is due to companies using Track 1 for applications they feel confident about.

That being said, even if Track 1 is not cheaper for small entities, it's still similar, or at least not extravagantly more expensive than regular applications. For a small entity, getting a patent issued quickly could provide a great advantage, either for market presence or attracting venture capital or other funding. 

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Commil v. Cisco and Induced Infringement

Posted in Litigation, Patents, PRACTICAL IP Tips

The Supreme Court recently granted cert in Commil USA, LLC v. Cisco Systems, Inc., considering the issue of whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).

The Supreme Court's decision on this issue could impact potential defendants' approach to litigation.

This case began in the Eastern District of Texas where Commil won a $63 million dollar jury award. The jury instruction said that Cisco could be liable if it "knew or should have known that its actions would induce direct infringement." However, the Supreme Court held in Global-Tech v. SEB that induced infringement "requires knowledge that the induced acts constitute patent infringement." Though Cisco was aware of Commil's patent, it claimed to have a good-faith belief that the patent was invalid. Under Global-Tech, such good faith could appear to be a defense to liability for induced infringement. Cisco felt that the jury instruction in Commil did not give it the ability to properly assert this defense. Essentially, the Commil jury instruction allowed for a finding of liability for mere negligence. Cisco is arguing that more than negligence is required, i.e., actual knowledge. The Federal Circuit agreed and held that "[f]acts sufficient to support a negligence finding are not necessarily sufficient to support a finding of knowledge." 

Critics of the Federal Circuit decision say that a knowledge standard would vitiate induced infringement. If defendants can avoid induced infringement solely by claiming to have a good faith belief that a patent is invalid, then every company will profess that belief. Disproving the belief may prove near impossible as defendants produce reams of self-serving evidence. Supporters of the decision say that the good faith belief is just one piece of evidence to consider. Of possible interest, the Solicitor General sided with Commil, arguing that a good faith belief of a patent's invalidity should not factor in a liability analysis.

This will be a case to watch. If the Supreme Court sides with Cisco then potential defendants will have increased leverage in patent ligation going forward.

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Misleading Invoices for International Trademark Registrations

Posted in In the News, PRACTICAL IP Tips, Trademarks

The World Intellectual Property Organization (WIPO) -- the organization that administers the Madrid Protocol and Madrid Agreement systems of international registration of marks -- has recently issued a warning notice regarding a new kind of misleading invoice being sent to owners of international trademark registrations and their representatives requesting payment of fees.  The organization issuing these invoices is holding itself out as the World Intelligent Property Office and is using a similar name, logo, address and contact information as those of WIPO.

If you receive an invoice related to your trademarks, you should verify its authenticity with Bell Nunnally, your trademark attorney, WIPO or the Intellectual Property Office through which your mark is registered before remitting payment.

WIPO has databases containing samples of misleading invoices and similar announcements issued by various countries.

For information on similar scams in the United States, click here.


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How Might a 3D Printing Revolution Impact Intellectual Property Law?

Posted in Copyrights, In the News, IP Ownership, Litigation, Patents

3D printing has drawn increased attention in the past few years. 3D printing involves a computer-guided tool that deposits powdered, liquid, paper or sheet material in successive layers to form an object. The tool automatically fuses the layers together during the depositing process. 3D printing can create a variety of objects such as toys, bicycle parts, furniture, and even guns. 3D printing has even been used in space. The computer that controls a 3D printer uses a set of blueprints to make products, making the procedure quite easy for the layman.

As with any new technology, 3D printing has raised some tough legal questions, and here are a few of the main ways that 3D printing and IP laws will intersect: 

First, case law and statutes regarding inducement of patent infringement will grow in importance. If 3D printing becomes accessible to millions of households, then patentees will be unable to sue each infringer who builds a patented product. However, a patentee could go after the entity who distributed the blueprints used to create a patented product.

Second, there will be an increase in patenting of materials and material science technology. Owners of 3D printers can build their own items, but they need material to do it. 3D printing typically employs various plastics, but there are technologies using powders, metals and other materials. Companies may find increased value in the material sciences. Consumers may need to buy less manufactured product, but they'll need to buy more raw material.

Third, companies may focus on patenting and manufacturing items that can't be 3D printed. Over time, 3D printing may be shown to have limited value for specific items. Maybe certain materials aren't easily adaptable to 3D printing. Or certain items will require a specific manufacturing process to create. Companies may focus on the areas where 3D printing is weakest, although it will take time to determine what these subject areas are.

Fourth, companies will turn to copyright to protect their ideas. Similar to the first point above, if millions of consumers have 3D printers, and it's pointless to sue every infringer, then producers will see less value in patents. But copyrights may grow in importance. A patent is expensive, costing thousands of dollars in application and legal fees. But copyright registrations for blueprints can be obtained for $35-$55. The copyright owner can then sell the blueprints or sue unlicensed distributors. Copyright infringement can result in large statutory damages. There will, of course, be some pirating of material, such as with music and movies. But digital distribution of music and movies is still a big market. Similarly, producers may have to figure out how to make money from the distribution of copyrighted blueprints. Maybe someday consumers will be able to download  3D printing blueprints from iTunes and similar services. 

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Teva and the Foundation of Patent Litigation

Posted in Litigation, Patents

Patent_searchAmazingly, there is only one patent case on the Supreme Court’s docket, so far—though there are at least three more cases up for consideration at the cert-petition stage. (The Supreme Court decided five patent cases last term.) The case that is on the docket, Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., involves a patent dispute between Teva and various generic drug companies, over a drug prescribed for the treatment of multiple sclerosis. But the Teva case raises a question that has little to do with the details of the particular dispute between these drug companies. Instead, the Teva case arguably cuts to the foundation of all patent litigation.

Typically, under the rules of civil litigation, findings of fact are made by the district court and those factual findings “must not be set aside [by the court of appeals] unless clearly erroneous.” In other words, the court of appeals’ job is to focus on legal questions, deferring to the district court when it comes to questions of fact.

The procedure for patent litigation includes an early phase called “claim construction,” where the district court must construe the patent claims that are in dispute, before the trial—and even before summary judgment proceedings—can occur. Arguably claim construction is the foundation of patent litigation, and it involves a lot of scientific evidence from experts on both sides. The district court relies on this evidence (and on its determinations regarding the validity or credibility of the evidence) when it issues its factual findings and its decision regarding claim construction.

But on appeal in a patent case, the Court of Appeals for the Federal Circuit does not defer to the district court’s factual findings. Instead, the Federal Circuit may ignore the district court and make its own determinations regarding claim construction, under what is known as “de novo” review. As Teva puts it, this is contrary to the general rules of civil litigation—and it can make patent litigation “longer, more expensive, and less predictable.”

In Teva, the district court made factual findings pertaining to polypeptide chemistry, which guided the district court’s interpretation of a key term in Teva’s drug patent. But on appeal the Federal Circuit disagreed with those findings and construed Teva's patent in a way that invalidated it.

Now, Teva essentially asks the Supreme Court to put an end to the Federal Circuit’s de novo review of the district court's claim construction—requiring the Federal Circuit to give the same deference to the district court’s factual findings that is usually required in civil litigation.

In other words, the Teva case could have a profound effect on patent litigation going forward. If the Supreme Court does what Teva is asking it to do, claim construction will become much more important in the district court—because parties won't have an open door to challenge the claim construction on appeal.

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Posted in IP Ownership, Litigation, Patents

With the election of a Republican controlled Senate many expect the new congress to revisit the issue of patent reform.  Patent reform legislation was passed by the Republican controlled House of Representatives in 2013 but failed to get out of the Democratically controlled Senate.  With both the Senate and House in Republican hands, it appears likely that some form of patent reform legislation could pass Congress in 2015.

                The America Invents Act (AIA) passed in 2011 and was fully implemented in 2013.  It included a host of changes to patent eligibility, procedure and post grant review process, but many critics felt that it did not do enough to protect companies and consumers from frivolous patent litigation, particularly patent enforcement actions brought by non-practicing entities (patent holders who do not produce the patented product).

                Current patent reform movements have sought to remedy the perceived deficiencies in the AIA, and the House Republican bill, H.R. 3309, should provide a good guide to the types of reform we can expect to see from a new Congress.  H.R. 3309’s provisions included:

  • A requirement that plaintiffs be more specific in pleadings to the court;
  • A provision that would expand the awarding of attorney fees to the prevailing party;
  • Limited discovery early in an infringement proceeding (prior to claim construction);
  • Requirements of transparency in the ownership of Patents; and
  • Protection for customers and end users from patent infringement claims.

                While H.R. 3309 did not make it through the Senate, patent reform has traditionally enjoyed relative bi-partisan support and President Obama has seemed to favor the types of reforms found in H.R. 3309.  As a result, patent reform legislation might be an area where President Obama and the new Republican Congress can find common ground.

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Protection Under the DMCA (Digital Millennium Copyright Act) Safe Harbor

Posted in Copyrights, IP Ownership, PRACTICAL IP Tips, Websites, Domain Names & Apps

What is the DMCA?

The Digital Millennium Copyright Act (“DMCA”) is an amendment to the United States Copyright Act (i.e., the federal copyright law) signed into effect in October 1998 that, among other things, provides certain limitations on the liability of online service providers (“OSP”) for acts of copyright infringement.

The DMCA actually contains two types of liability limitations:

The first protects an OSP which provides a link to copyrighted online material located on another site.

The second, which we discuss in more detail here, limits the liability of OSPs that store copyrighted materials on a system or network they control or operate if (among other things), (i) such storage was directed by a third-party user, (ii) the service provider has designated an agent (also referred to as a “take-down agent”) to receive notifications of claimed infringement and (iii) the service provider has both registered the agent’s contact information with the U.S. Copyright Office and publicly provided such information on its website.

It is important to note that, because the DMCA protects against claims of copyright infringement and not other types of wrongdoing, it will not help against claims of infringement concerning trademarks or service marks or claims of defamation, stolen trade secrets, etc.

Why is the DMCA important?

The DMCA is a “safe-harbor,” which is legalese for a written exception to the general rule that an OSP is liable for the acts of infringement its users commit. Because the DMCA is intended to protect OSPs from inadvertent infringement by third parties, it will not help in a situation where the OSP itself is accused of infringement (i.e., posting copyrighted content in its own right), or where it knows content it hosts infringes a copyright.

Since the DMCA can be an absolute defense to liability for copyright infringement by a third party, registering a take-down agent may even prevent someone from suing the OSP for infringement in the first place.

Does the DMCA apply to me?

In essence, you qualify as an OSP and are eligible for protection under the DMCA if you operate, manage or host a website (including a blog) that allows users (aka third parties) to upload content. That can include the following activities:

  • Allowing users to post comments or reviews, or respond to discussion threads
  • Allowing users to upload media, such as pictures, .gifs or videos

The above is true because the definition of “infringe” or “infringement” is very broad and captures many activities. For example, if your site allows users to submit a thumbnail sized avatar and the user chooses a copyrighted image, you can be liable. Knowledge or intent are not relevant for purposes of liability for infringement under the copyright law; so, you can be held responsible for copyright infringement even if you have no idea these activities are going on (and, if you have not registered a DMCA agent, even if you take down the offending material immediately after being notified!).

How can I obtain protection under the DMCA? 

With 3 easy steps!

1.    Designate a copyright take-down agent to receive DMCA takedown notices.  

In order to designate an agent, an OSP must provide some basic information and pay a filing fee ($105 for the first OSP, $35 for up to 10 additional OSPs) to the U.S. Copyright Office. The requested information includes the full legal name of the OSP(s) and contact information (including email address) for the agent and the U.S. Copyright Office has provided a form for this purpose. The U.S. Copyright Office maintains an official list of designated agents, which allows a person who believes his or her work is being infringed to quickly send a takedown notice.

2.    Adopt a copyright infringement policy and notify site users.  

The OSP must publish a statement on its website to provide notice to the site users of its copyright infringement policies, the consequences of repeated infringing activity, and advising users of the takedown agent’s contact information.  Many people include a DMCA policy in their terms of service, but it may also be placed in a separate document.

 3.    Watch for and properly comply with any notice of claimed infringement received.

A person claiming infringement must provide the OSP a signed written notice meeting certain specifications, including: identification of the work which is allegedly infringing, a demand to remove such material, the claimant’s valid contact information, and statements to the effect that (i) the claimant is the owner of the material (or authorized to act on the owner’s behalf) and (ii) the material is not being used in an authorized manner.

Recall that the DMCA protects only against copyright infringement, not against other types of accused wrongdoing.  Therefore, an OSP must be careful to make sure any notice it receives alleges a copyright infringement and not some other type of wrong doing.

Also note that not all cease and desist letters or takedown notices will be proper, and an OSP is not under a legal obligation to comply with notices that do not meet the requirements. If a takedown notice does meet the proper requirements, an OSP should: (1) “expeditiously” remove or disable access to the potentially infringing material (unfortunately, the standard for “expeditious” is unclear) and (2) notify the potentially infringing user that his or her material has been removed to allow them to file a counter-notice. Often, a potentially offending user will not file a counter-notice, but if he or she does, the OSP should forward the counter-notice to the person who claimed infringement. That person must then file a lawsuit within 14 days; otherwise, the OSP may reinstate the disputed material.

While there is no requirement under the DMCA for an OSP to remove any material(s), the receipt of a valid takedown notice acts to give the OSP notice of the allegedly infringing activity, and therefore ineligible for limited liability. The OSP may then face liability for continuing to host the material.

Consult a qualified attorney if you are unsure of what the notice or demand letter is alleging or if you have questions about whether you must comply with a takedown notice.

I didn’t register a DMCA agent and now someone has filed a copyright infringement lawsuit against me. Am I out of luck?

In order to benefit from the safe harbor protections, an OSP must register a DMCA agent prior to an allegation of infringement which it wishes to defeat with the registration.

Even if an OSP has not registered a DMCA agent, it can still defend against a claim on the merits of the alleged infringement. For example, if the amount of supposedly infringing material is small or is posted in a way meant to be educational and includes a citation for the material, you may have a defense under the fair use doctrine (although a fair use defense may not apply depending on the facts of each particular situation). Some cases also indicate that a defense may exist by asserting that infringing third-party posts are simply not the responsibility of the OSP. However, if an OSP has not registered under the DMCA, it will not be able to claim that it was unaware of the infringing activity or that it quickly removed the offending material.

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Confusion on Software Patents and Alice v. CLS Bank - Alice in a Computer Wonderland

Posted in Litigation, Patents, Software

ComputerLast term the U.S. Supreme Court handed down Alice Corp. v. CLS Bank International. Alice drew interest for its focus on software and patentability under 35 U.S.C. § 101, the statute that codified eligibility for patent protection. The outcome impacts industries such as software, computer hardware, and telecommunications. Patents dealing with software or computer-implemented inventions may not lead the ten o'clock news...but some of the most successful American companies, such as Apple, Microsoft, and Google, work in this sector, and the Alice decision was of great interest to the whole industry. So the Supreme Court had all of Silicon Valley on the edge of its seat waiting for Alice.

The patents in suit in Alice dealt with software used in financial trading - specifically a computer-based method for intermediated settlement. For example, two parties to a financial trade choose to use a third party intermediary. This intermediary accepts payments from each side and completes the transaction when each party has fulfilled its obligations. A party's failure to pay terminates the trade. This system presents less risk because no money has been exchanged if one party fails its obligations. Alice's patents took this financial practice and implemented it on a computer. CLS Bank challenged the patents' subject matter eligibility under § 101. Section 101 states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

The Supreme Court has previously found implicit exceptions to this statute, namely, laws of nature, natural phenomena, and abstract ideas are not eligible for patent protection.  

The Supreme Court heard the case after the district court invalidated Alice's patents on summary judgment. The judge ruled that a method of intermediated settlement to minimize risk is a "basic business or financial concept." At the Federal Circuit, a panel reversed the district court by a vote of 2-1. CLS Bank petitioned for en banc rehearing, which the court granted. Seven out of ten judges on the en banc panel agreed with the district court and invalidated Alice's patents. But the Federal Circuit created more confusion than certainty. The confusion came from the multiple opinions (seven) and the lack of a discernible standard for applying § 101. The plurality opinion, with five votes, outlined an analysis focusing on the risk of "preemption." Preemption occurs when a patent issues on a fundamental concept or idea. Upholding such a patent preempts the use of the building blocks of invention, therefore stifling innovation.

Alice appealed and the Supreme Court granted cert. A measure of interest in the case: third parties filed over forty amicus curiae briefs. The Supreme Court unanimously invalidated the patents. Justice Thomas, writing for the court, reasoned in part:

We need not labor to delimit the precise contours of the 'abstract ideas' category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of 'abstract ideas' as we have used that term.

Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2357 (2014).

Since the decision, practitioners have debated whether Alice changed the law or affirmed it. Over the summer numerous courts invalidated computer-implemented patents on § 101 grounds based on the Alice decision. Examples include:

This wave of decisions suggests that Alice changed the law. On the other hand, the first judge to look at Alice's patents found them invalid. The Supreme Court affirmed, not overruled, the trial court judge.

We will see how the case law develops and how the USPTO implements Alice in its rulemaking. Our experience so far is that the USPTO is taking a tougher stand against software patents. Software is still patentable in certain circumstances but it will take time to discern the exact limits of software patentability post-Alice.  

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