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Troutman Sanders Federal Circuit Review – February 20, 2015

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Each week, Troutman Sanders’ Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.   

This week:

  • What a rational jury “could have found” does not trigger collateral estoppel to bar new litigation 

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February 20, 2015   No Comments

WDVA Judge Refuses to Dismiss Copyright Claim for Use of Politician’s Photograph

In Garner v. Higgins, No. 7:14CV461 (W.D.Va. Feb. 11, 2015), found here, Judge Glen Conrad denied a defendant’s motion to dismiss or for summary judgment of a copyright claim based on the defense of fair use.

Valerie Garner, the editor and publisher of the Roanoke Free Press, brought a copyright action against Justin Higgins for his posting of her 2008 photo of a Virginia politician, Salam “Sam” Rasoul, on his for-profit political website. Higgins used both a cropped version of the photo with the words “Dirty Money” written across the top as a hyperlink as well as a full-sized copy of the photo to accompany his article on Rasoul. [Read more →]

February 12, 2015   No Comments

EDVA Court Rejects Laches Defense

On February 4, EDVA Senior District Judge Henry Morgan denied defendant LifeCell Corporation’s post-trial motion to exclude pre-suit damages based on laches in LifeNet Health’s patent infringement suit that we have discussed earlier. LifeNet Health v. LifeCell Corp., Civil Action No. 2:13cv486 (E.D.Va. Feb. 4, 2015), found here.

Background

After an eleven-day jury trial, LifeNet was awarded a lump sum royalty of approximately $35 million for infringement by four LifeCell products, including the Strattice product.

LifeCell asserted laches based on a press release regarding FDA approval of Strattice that was sent to four LifeNet employees, including a named inventor of the patent-in-suit, in June, 2007, just more than six years before LifeNet filed suit. The press release stated that Strattice was a tissue graft made from pigs that “complements the company’s AlloDerm tissue repair product, which is derived from human skin” and stated that a full commercial launch of the product would be made in early 2008.

Because laches is an equitable remedy, Judge Morgan ruled, it cannot be considered by the jury, and so the Court ruled on the laches defense pursuant to a motion under Rule 52(c).

Presumption of Laches

LifeCell based its laches defense solely on the argument that LifeNet’s delay in filing suit for more than six years after receipt of the press release about FDA approval of Strattice gave rise to a presumption of laches. While a delay of more than six years can give rise to a presumption of laches, the six-year clock does not start to run until a patentee “has actual or constructive knowledge of the defendant’s potentially infringing activities.” Here, Judge Morgan concluded, no presumption arose.

Actual Knowledge

Judge Morgan found that the press release did not provide actual knowledge of LifeCell’s potentially infringing activities for two reasons. First, the release did not contain any details about the aspects of Strattice which were found to infringe. Second, the release compared Strattice to AlloDerm, which was not accused of infringement. “[B]y comparing the product in the press release to a non-infringing product, the only inference from 2007 is that Defendant was releasing a freeze-dried product similar to original AlloDerm which utilized pig skin instead of human skin.”

Constructive Knowledge

Judge Morgan’s began his analysis of constructive knowledge for purposes of laches by citing I/P Engine v. AOL Inc., 915 F.Supp.2d 736 (E.D.Va. 2012), rev’d on other gnds., 2014 U.S. App. LEXIS 15667 (Fed. Cir. Aug. 15, 2014), which held that if a patentee knows of a product that (i) embodies technology similar to the patented technology and (ii) uses that similar technology to accomplish a similar objective, the patentee has a duty to examine the product more closely to determine infringement. Further, constructive knowledge exists even if the patentee is actually unaware of a defendant’s activities, if those activities are prevalent in the inventor’s field.

Since sales of Strattice had not yet begun in 2007, however, there was no product for LifeNet to examine. Unlike I/P Engine, where Google described the infringing technology on its blog in words similar to the language the plaintiff used in its complaint, “the press release simply does not have the kind of information that would have placed Plaintiff on such notice that it should have undertaken an investigation.” Accepting LifeCell’s position would mean that “potentially any time a company announced FDA approval of a product, with only a generic description of the product, that company would be starting the laches clock.”

The Take-Away From LifeNet

LifeNet and I/P Engine illustrate the subtle difference between sufficient and insufficient information for purposes of constructive notice. In I/P Engine, the patentee had constructive notice of technology that was “significantly similar” to the patented technology. In LifeNet, by contrast, the patentee had actual notice of a later-accused product more than six years before suit was filed, but notice of the product was not enough. Rather, notice must include some link or similarity to the patented technology. In LifeNet, the notice the patentee received did not provide a reason for further investigation and could even be said to have “taught away” from the patented technology by comparing it to a different type of product. In other words, notice must somehow point the patentee towards the patented technology to impose a duty of further investigation that could lead to a laches defense.

February 6, 2015   No Comments

Troutman Sanders Federal Circuit Review – February 6, 2015

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Each week, Troutman Sanders’ Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.   

This week:

  • Federal Circuit affirms “broadest reasonable interpretation” for IPR claim construction. 
  • Transmitting still images and sending video clips by email does not inherently disclose streaming video. 

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February 6, 2015   No Comments

Supreme Court Holding Emphasizes Risks in Modernizing Trademarks

When brand owners such as Wendy’s fast food restaurants decide to modernize a logo to appeal to changing consumer tastes, the focus is usually on branding and image consultants. However, a decision by the Supreme Court earlier this week served as a reminder that trademark laws need to be factored into the decision to modernize or modify a brand.
Companies regularly modernize or modify brands to freshen them to appeal to changing consumer tastes or send new messages to the public. The goal is to retain the recognition and good will in the existing brand while creating a new vision for that brand. For example, a review of the evolution of the famous Prudential “Rock of Gibraltar” shows a vivid graphic depiction of the physical “Rock” that evolved into a highly stylized logo.

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January 23, 2015   No Comments

Troutman Sanders Federal Circuit Review Special Issue – January 22, 2015

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Each week, Troutman Sanders’ Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.   

Special Issue – Important Supreme Court Case

This week:

  • Supreme Court Applies “Clear Error” to Subsidiary Factual Findings in Federal Circuit’s De Novo Claim Construction. 
  • Court Remands Patent Prosecution Malpractice Case to State Court. 
  • Federal Circuit Reverses Rejection of Trademark Utilizing Geographically Descriptive Term. 

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January 23, 2015   No Comments

SCOTUS: Tacking a Question for the Jury

Justice Sotomayor delivered the unanimous decision of the Supreme Court in Hana Financial, Inc. v. Hana Bank, et al, 574 U.S. __, No. 13-1211 (Jan. 21, 2015), holding that whether tacking is available to a trademark owner in a given case is question of fact that should be determined by a jury.  The full opinion is available here. [Read more →]

January 22, 2015   No Comments

Troutman Sanders Federal Circuit Review – January 16, 2015

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Each week, Troutman Sanders’ Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.   

This week:

  • Unaffiliated third party use must be publicly accessible to invalidate later-filed patents under 102(b).
  • Federal Circuit applied the de novo standard of review to the objective prong of the willfulness inquiry and affirmed the district court’s finding of willfulness.

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January 20, 2015   No Comments

District Court Denies Motion to Seal Trial Transcript

As we have written before, patent litigants can easily protect confidential proprietary and trade secret information produced in discovery or submitted with pre-trial motions through the use of protective orders and motions to seal, but it is far more difficult to keep trial testimony and exhibits out of the public record. A recent decision from Judge Morgan denying a patent defendant’s motion to seal the portions of a trial transcript that revealed the “specific cocktail of ingredients” used in the defendant’s products demonstrates just how narrowly the EDVA applies the standards for sealing trial testimony. LifeNet Health v. LifeCell Corp., Case No. 2:13cv486, 2014 U.S. Dist. LEXIS 179930 (E.D. Va. Jan. 9, 2015) (found here).

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January 14, 2015   No Comments

Troutman Sanders Federal Circuit Review – January 9, 2015

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Each week, Troutman Sanders’ Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.   

This week:

  • Federal Circuit Affirms Patent Ineligibility of Myriad BRCA Claims, Leaves Open Potential Patentability of Methods to Screen for Newly Discovered Gene Mutations
  • Court Reverses Premature Dismissal of Trade Secret Misappropriation Claims at the Complaint Stage
  • Reasonable Royalty Encompasses What an Infringer Would Have Paid in a Hypothetical Negotiation And Is Not Limited by What the Infringer Actually Earned from his Unilateral Infringement Discount
  • Prior Art Is Available and Not Abandoned When Delays Are Consistent With an On-going Commitment and When A Prior Inventor Resumes Work Before A Later Inventor Conceives The Invention; Broadening Reissue Patents May Be Granted Even When Filed in View of Market Developments

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January 9, 2015   No Comments