The Supreme Court recently held in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC that the defense of laches cannot be invoked against a claim for damages brought within the statutory six-year limit. The decision comes at little surprise given the Court's ruling in Petrella v. Metro-Goldwyn-Mayer, which considered a similar provision of the Copyright Act. The Court reasoned that Congress set forth an express limitations period in the patent laws, and giving effect to laches within the statutory period would amount to judicial overriding. In his lone dissent, Justice Breyer noted that the decision ignores the application of laches to reign in abusive pre-litigation conduct by a patent holder who unreasonably delays suit, knowing he can collect damages for the previous six years of infringement.
In a recent opinion narrowing the international reach of U.S. patent laws, the United States Supreme Court overturned the Federal Circuit’s determination that shipping a single part of a patented invention, to be joined with other components overseas, can constitute infringement.
In Life Techs. Corp. v. Promega Corp., No. 14-1538, Life Technologies manufactured an enzyme to be used in a DNA analysis kit, and shipped the enzyme to London where the company proceeded to manufacture the remaining components of the toolkit. Promega Corp. filed suit, alleging patent infringement due to Life Technologies’ supplying the single component for genetic testing from the United States to the United Kingdom. In reversing the district court’s order granting Life Technologies’ motion for judgment as a matter of law, the Federal Circuit held that certain circumstances can impose liability on a party under 35 §271(f)(1) for “supplying or causing to be supplied a single component for combination outside the United States.”
The Supreme Court reversed the Federal Circuit, and after engaging in a statutory construction of the plural term “components,” held that merely supplying a single component does not constitute infringement under Section 271(f)(1). In the decision for the high court, Justice Sotomayor wrote that the governing statute does not apply to the quality of components, rather the quantity: “We hold that the phrase ‘substantial portion’ in 35 U. S. C. §271(f )(1) has a quantitative, not a qualitative, meaning. We hold further that §271(f )(1) does not cover the supply of a single component of a multicomponent invention.”
While the scope of 35 §271(f)(1) remains subject to further litigation, specifically vis-à-vis how many components would constitute “a substantial portion,” Life Technologies makes clear that a party cannot be liable under 35 §271(f)(1) due to the extraterritorial supply of a single component.
Inter Partes Review is a proceeding that the USPTO adopted in 2012 that allows a challenge to an issued patent based on obviousness or lack of novelty. Inter Partes Review has become an increasingly common tool to invalidate a patent as an alternative to litigation in Federal Court. In Covidien LP v. University of Florida Research Foundation Inc., the US Patent Trial and Appeal Board addressed the issue of whether sovereign immunity would extend to a state actor who owns rights to a patent being challenged in an administrative forum such as an Inter Partes Review. Under the 11th Amendment of the U.S. Constitution, the 50 States of the Union and their branches, have immunity from a lawsuit instituted by a private party. Court decisions interpreting the 11th Amendment have construed it broadly to extend this immunity not only to lawsuits in a court of law, but also to other adjudicative proceedings such as those of administrative agencies.
An Inter Partes Review in many way parallels a lawsuit in a court of law. For example, there is discovery, depositions, motions, and oral argument. Further, a panel of judges decide not only the outcome of the proceeding, but also whether the proceeding may even be instituted. In Covidien LP v. University of Florida Research Foundation Inc., the U.S. Patent Trial and Appeal Board ruled in favor of the University of Florida Research Foundation. The U.S. Patent Trial and Appeal Board decided that due to the similarities between civil litigation and an InterPartes Review, the University of Florida Research Foundation, being an arm of the State of Florida, was entitled to assert sovereign immunity as a defense to the institution of an Inter Partes Review. This decision may have an effect on the number of Inter Partes Reviews that are instituted against public research institutions, such as state universities.
The latest chapter in the Apple v. Samsung litigation, previously blogged about here, involves a determination by the Supreme Court of the United States that damages for design patent infringement can be calculated based on only a component of a product, rather than the entire product, if only that component is found to infringe. This is significant because Apple's $400M damages award was based on Samsung's total profit for sales of the infringing phones. However, Apple's design patent only covered certain features of Samsung's phones, and according to the language of the patent statute, as Samsung argued, it should only have to pay damages on the infringing components, not the entire product.
Last year, the Federal Circuit decided UltimatePointer, LLC v. Nintendo Co., Ltd. UltimatePointer brought a patent Infringment suit against Nintendo for its Wii console which uses indirect-pointing remote control devices. The district court ruled for Nintendo on summary judgment concluding that direct-pointing devices, and not indirect-pointing devices, were within the scope of the claims of UltimatePointer’s patent. The Federal Circuit affirmed the district court’s ruling, reasoning that the specification of the patent repeatedly emphasize that the invention is directed to a direct-pointing device and that there are disadvantages with indirect pointing devices. This decision underscores the importance of the specification on how claims are construed. As seen in UltimatePointer, LLC v. Nintendo Co., Ltd., a court may limit the scope of a claim based on the content of the specification.
The latest chapter in the Apple v. Samsung saga, previously blogged about here, is set to play out during oral arguments in front of the United States Supreme Court this fall. Samsung was found to infringe several of Apple's design patents related to specific design features of a smartphone, and not necessarily an entire phone. 35 U.S.C. § 289 authorizes courts to award the total profit from the article of manufacture bearing the design. Thus, the original damage award was based on Samsung's profits from the sales of the smartphone. The Supreme Court, however, will hear the question of whether, where a design patent is applied to only a component of a product, an award of infringer’s profits should be limited to those profits attributable to the component.
The USPTO recently introduced its initiative to "fast track" patent applications which cover immunotherapies for cancer. The program is designed to support the White House's National Cancer Moonshot, which aims to eliminate cancer with a $1 Billion call to arms to find new therapies and techniques for prevention. Eligible applications will be prioritized for examination, and, once accepted into the program, applicants can expect to receive a final decision in one year or less.
Apple has been ordered to cease sales of both the iPhone 6 and iPhone 6 Plus in Beijing, after the Beijing Intellectual Property Office ruled that the aforementioned models violate the design patent held by the company Shenzhen Baili, for its 100C phone.
Apple quickly downplayed the ruling, stating in a press release that an appeal had already been filed, that would allow the phones to stay on the market in Beijing, pending the outcome. While the decision covers only Beijing, additional lawsuits could be filed against Apple elsewhere in the country, that could attempt to use the case as a precedent if not overturned.
The decision is another indication of Chinese officials increasing scrutiny of the company, amidst already growing concerns about the company's relationship with China.
Supreme Court grants district courts the discretion to award enhanced damages for egregious patent infringementWritten by James Ryan
The Supreme Court issued a unanimous decision earlier this week in Halo Electronics, Inc. v. Pulse Electronics, Inc., granting district courts the discretion to award enhanced damages up to three times the amount found or assessed, pursuant to 35 U.S.C. §284, against those guilty of patent infringement, however, limiting the award to “egregious cases of misconduct beyond typical infringement.” The decision reverses the Federal Circuit’s two-part test, established in In re Seagate Technology, LLC, as inconsistent with the language of §284. Seagate, which required the patent owner to satisfy an objective and subjective test before a court could increase damages for willful infringement, was found to be “unduly rigid” and confined the ability of district courts to exercise the discretion §284 conferred on them. For more on this case, visit http://www.supremecourt.gov/opinions/15pdf/14-1513_db8e.pdf.
Ninth Circuit Breaks from Sixth; Recognizes De Minimis Exception to Song Sampling Copyright InfringementWritten by W. John Eagan
Recognizing that it was taking an unusual step, the Court of Appeals for the Ninth Circuit deliberatley broke from Sixth Circuit precedent in VMG Salsoul, LLC v. Madonna Louise Ciccone when it determined that the 0.23 second sample of horns which was copied from an earlier song titled "Love Break" was de minimis, and therefore, did not constitute copyright infringement.