Tag Archives: intellectual property litigation

Supreme Court Holds That Patentee Bears Burden of Persuasion on Infringement When Licensee Seeks a Declaratory Judgment

By: Joe Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

We posted about this case in May 2013, and on January 22, 2014, the Supreme Court decided this matter.

First, the Supreme Court held that the Federal Circuit did not lack subject-matter jurisdiction.  Because federal courts determining declaratory judgment jurisdiction often look to the “character” of the declaratory judgment defendant’s “threatened action,” which in this case, the threatened hypothetical action would constitute the licensor terminating a license and bringing suit for infringement under federal patent laws, the declaratory judgment action would arise under federal patent laws.

Second, the Supreme Court held that when a licensee seeks a declaratory judgment against a patentee that its products do not infringe the licensed patent, the patentee bears the burden of persuasion on the issue of infringement.  The Supreme Court based this ruling on three settled legal propositions: (1) a patentee ordinarily bears the burden of proving infringement; (2) the operation of the Declaratory Judgment Act is only procedural leaving substantive rights unchanged; and (3) the burden of proof is a substantive aspect of a claim.

By way of background, the United States Supreme Court granted cert. to hear argument on whether, in a declaratory judgment action brought by a licensee, the licensee has the burden to prove that its products do not infringe the patent, or whether the patentee must prove infringement.  Medtronic Inc. (licensee) licensed a patent from Mirowski Family Ventures LLC (patentee / licensor) relating to a device used to stop imminent heart failure.  Medtronic subsequently created new products and then filed a declaratory judgment action claiming that its new products do not infringe the patent.  The Federal Circuit Court of Appeals held that Medtronic bears the burden of proving that its products do not infringe Mirowski’s patent.  Medtronic argued that the U.S. Supreme Court should overturn the Federal Circuit’s ruling, which Medtronic argued is inconsistent with the Supreme Court’s decision in MedImmune, Inc. v. Genetech, Inc., 549 U.S. 118 (2007).  In MedImmune, the Supreme Court ruled that a patent licensee that believes that its products do not infringe the patent is “not required . . . to break or terminate its . . . license agreement before seeking a declaratory judgment in federal court that the underlying patent is . . . not infringed.”  According to Medtronic, the Federal Circuit’s opinion undercut the MedImmune decision because it caused a licensee to take on the significant burden and cost of a presumption that its products infringe.  In turn, Mirowski argued that this case is distinguishable from MedImmune because the licensing agreement at issue specifically required Medtronic to file a declaratory judgment action if a dispute arose.  Mirowski submitted that the Federal Circuit correctly decided that, based specifically on the contract terms between the parties, Medtronic should bear the burden of proving that it should be let out of the contract for the new products.

Survey of Proposed Patent Lawsuit Reform Bills in Congress (Part 4)

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Another patent reform bill is quickly working its way through Congress as we speak. The Innovation Act (HR 3309) passed the House by a vote of 325–91 and is pending in the Senate, which has said that it will fast track passage of it. Many of the provisions are similar to those found in the other proposed pieces of legislation that we discussed earlier (see parts 1, 2, and 3), and address some of the concerns I raised in these prior discussions. One of the more significant provisions of the Innovation Act is the fee-shifting provision, which proposes to amend 35 U.S.C. § 285.

US Capitol BuildingUnder current law, patent lawsuits follow the American system in which each side pays its own legal fees. The current § 285 modifies the American rule somewhat, providing that in exceptional cases the court may award attorney fees to the prevailing party. The Innovation Act scraps the American rule altogether and flips current § 285 by providing that the court must award reasonable attorney fees and expenses to the prevailing  in patent cases, “unless the court finds that the position of the non prevailing party or parties was substantially justified or that special circumstances make an award unjust.” (Proposed § 285(a)).

As an initial matter, this provision is supposed to deter parties from filing frivolous lawsuits, but it is not clear that it will accomplish this purpose. To be a prevailing party requires a judgment by the court, likely either on a motion for summary judgment or a trial verdict. Neither of these happen towards the beginning of litigation, so a defendant will have to still incur significant costs to get to the point at which it has a chance to recover its fees. Many defendants will likely not want to incur those costs, especially if the plaintiff appears to lack significant assets or has a plausible basis for its claims (even with the interest party expansion of proposed § 285(b)).

This provision may, in fact, create an incentive for patent trolls, especially in cases where they have a strong patent but the damages are not significant. By defaulting to a loser pays system, there is a greater likelihood that patent trolls will file additional lawsuits and defendants in these kinds of cases will be required to pay the troll’s litigation costs, even when a troll would have been unlikely to prove willful infringement.

Finally, there are real questions about what it means to be prevailing party and what the “substantially justified” standard means. For instance, what happens if a plaintiff prevails on one claim, but the jury find non-infringement on another? Are both parties prevailing parties? Or, if the plaintiff prevails on one patent, but the defendant invalidates the other asserted patent? What happens if a target of a demand letter files a declaratory judgment action and forces a patentee into a lawsuit that it never intended to file?

Also, when, exactly, does a non-prevailing party have to be substantially justified in its position? At that time it first asserts the position? At the end of the litigation? At any time? These are not trivial concerns. A defendant at the initial stages of a lawsuit often will assert non-infringement and invalidity defenses and counterclaims before having much time to analyze the claims or having the benefit of the  court’s claim constructions. Those positions may be only in their initial stages with modest support, but later blossom into very strong positions. Similarly, what appear to be strong positions can turn into weak ones once the court issues its claim construction. In which of these situations are the positions substantially justified?

Courts will undoubtedly struggle with interpreting these standards and deciding who, exactly, “deserves” to pay and who does not. Moreover, while these new rules are clearly targeted towards fighting patent trolls, they apply equally in all patent cases, including the traditional competitor vs. competitor lawsuits. By changing the rules, it will create additional pressures that are more likely to be borne by defendants, who have no control over whether they are sued, than by plaintiffs, who can have significant control over when they sue and which patents/claims they sue on.

The Innovation Act looks likely to pass the Senate and be signed into law by the President. It will be interesting to see if it accomplishes what it purports to set out to do.

Defendant Files RICO Complaint Against Patent Troll

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

A colleague brought to my attention an interesting development in a patent “troll” case in the Southern District of New York that may foreshadow a new approach for companies to defend themselves in these kinds of lawsuits. It is a rather extreme approach, and it will be interesting to see how this case progresses.

MoneyLumen View Technology LLC filed a patent infringement lawsuit against FindTheBest.com, Inc. (Case No. 1:13-cv-03599-DLC). While this case was still pending, FindTheBest filed a separate lawsuit against Lumen View, its principals, and other related entities (Case No. 1:13-cv-06521-DLC), bringing claims under RICO and for extortion, abuse of process, civil conspiracy, and unfair business practices.


According to the two complaints, FindTheBest operates a web site that provides consumers with data-driven comparisons of a wide variety of products and subjects, such as phones, cars, and ski resorts. Lumen View contends that FindTheBest infringes U.S. Patent No. 8,069,073, which relates to a “System and Method for Facilitating Bilateral and Multilateral Decision-Making.”

Lumen View was formed on February 23, 2012 and obtained the patent in suit seven days later. It allegedly conducts no other business aside from filing patent lawsuits and licensing in patents, and has filed more than 20 patent infringement lawsuits relating to the’073 patent in the last 18 months.

On May 30, 2013 (the day after the complaint was filed), FindTheBest claims that it received a letter from Lumen View enclosing the complaint and demanding that FindTheBest pay to settle the lawsuit. Lumen View apparently initially demanded that FindTheBest pay $85,000 for a licensing fee, but dropped that demand to $55,000 the day before FindTheBest’s answer to the complaint was due. FindTheBest rejected Lumen View’s settlement demands and continued with the lawsuit. The parties have submitted a list of claim terms to be construed, and FindTheBest has moved for judgment on the pleadings, arguing that the patent is invalid under 35 U.S.C. § 101.

On September 16, 2013, FindTheBest filed an entirely separate lawsuit in the same court against Lumen View, its principals, and other related entities, bringing claims for violating RICO, extortion, abuse of process, civil conspiracy, and unfair business practices. FindTheBest contends that Lumen View engaged in a criminal enterprise by failing to conduct proper due diligence before filing its lawsuits and knowingly pursuing frivolous cases in order to extort settlement money from its targets. Defendants in this second case have not yet answered the complaint.

What This Case Means

This is an interesting and aggressive approach to fighting back against what FindTheBest apparently believes is a frivolous and improper lawsuit. It is curious that it is bringing this second lawsuit at this time—before the first case is even close to being resolved. One wonders how the Court will respond to this second action. Will it allow it to proceed? Will it stay or dismiss the case pending the resolution of the first lawsuit?

Civil RICO cases are generally disfavored by the courts and notoriously hard to prosecute. In general, such a claim would be extremely difficult for a defendant to bring in a standard patent infringement lawsuit because RICO requires a pattern of racketeering activity and multiple victims. In this case, however, because Lumen View allegedly filed multiple extortionate lawsuits against multiple “victims,” FindTheBest may be able to overcome these pleading hurdles.

Regardless, as long as the second lawsuit exists, it creates immense pressure on the patent holder and the persons and companies associated with it and likely completely changes the settlement dynamic. For one thing, Lumen View likely cannot take the approach that Loadsys did against Kapersky Labs and unilaterally drop the lawsuit if it thinks it will not prevail. Such an action would feed right into FindTheBest’s theory that the lawsuit was a sham and increase the chances that FindTheBest could prevail in its lawsuit.

It will be interesting to follow this case and see how it progresses. If nothing else, it gives all parties something more to think about in lawsuits of this type.

What to Do About Patent Trolls?

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

The problem with patent assertion entities (PAEs), also called patent trolls, continues to be a hot-button issue among practitioners, companies, and the government. Recently, Gene Quinn from IPWatchdog wrote about one proposed solution he and others see to this problem—encouraging companies to fully litigate these lawsuits and not to settle quickly, thereby raising the costs of this kind of litigation to discourage the bringing of weak lawsuits. But, is this really a practical solution to the troll problem for everyone?

TrollQuinn believes that the issues faced by patent troll targets are similar to those faced by the auto insurance industry in the 1980s. Back then, the auto insurance companies frequently chose to settle cases for less than the litigation costs, regardless of the merits. This settlement strategy encouraged litigants to bring even more lawsuits, often of a questionable nature. It wasn’t until the industry decided to fight all of the cases that the more frivolous lawsuits disappeared. As Quinn states, “[t]he lesson was clear: if you don’t fight, and if you make yourself an easy target, people will sue you on both good and bad cases.”

In March 2011, Lodsys approached 55 companies demanding compensation for their alleged infringement of Lodsys patents. 51 of the companies settled out of court, and 3 others settled a few weeks after Lodsys brought suit. Only Kapersky Labs decided to vigorously defend itself. After over two years of litigation and just days before trial, Lodsys unilaterally gave up and dropped its lawsuit against Kapersky Labs. Because Kapersky Labs adopted this approach, Quinn expects that it will no longer be considered an “easy target” and that it will not be sued as often as before.

My feeling is that Quinn is correct that settling weak patent infringement lawsuits only encourages and perpetuates the troll system. The problem that I have with his solution is that it is not a universal solution and is really only effective for a limited number of defendants.

While some trolls are looking for a large payday, many are willing to settle for relatively small amounts in comparison to the litigation costs—in the thousands or tens of thousands range (see, e.g., here and here). Patent litigation is expensive, with pre-trial costs ranging from $350,000 to $1,000,000 for modest size cases and total costs ranging from $700,000 to $2,000,000. Thus, a company is faced with a decision of whether to pay a few thousand dollars now to end the litigation and receive a fully-paid up license or spends hundreds of thousands or millions to hopefully defeat the troll in the courts (which is no guarantee, as any litigator will tell you).

The law potentially allows a prevailing defendant to collect its fees and expenses, but there is no certainty that a defendant can meet the high standard required to get such an award or that it will be able to collect such an award from the troll. Many of these trolls are shell companies with little to no real assets. Even if the company is able to get and collect its fees and expenses, that still would not make it whole. The company will likely have wasted 2+ years in the litigation process, with all the distractions and stresses that it creates.

In addition, for many companies the litigation costs represent a significant portion of its annual profits. It may have to lay off workers, forgo development, or otherwise restrict its operations during the litigation simply to pay its legal bills. That is a lot to ask of a company in order to fulfill some greater societal goal of discouraging patent trolls, especially if it is not a frequent target of patent trolls itself.

Trolls are obviously counting on companies to engage in exactly this type of analysis, which is why they offer certainty at a relative low cost. It encourages companies to pay quickly and avoid both the long-term legal costs and the potential of a large judgment against them. As a purely business decision, it is hard to ignore, even if it is extortionate.

So, what is the solution? Larger companies that are frequent troll targets should seriously consider the approach that Kapersky Labs used (and Quinn encourages) of aggressively litigating these kinds of cases. (Of course, these companies always need to evaluate the merits of the case before deciding whether to litigate.) By raising the costs of doing business and denying the trolls an easy score, trolls will likely begin to avoid suing that company, which is a win for both the company and the legal system.

It is more difficult for smaller companies to adopt this approach, however. These companies likely will need help from the Courts, Congress, and the President to create disincentives to discourage trolls from bringing frivolous lawsuits in the first place. In the end, as long as there is money to be made, the trolls will exist and will find ways around whatever rules are in place.

Some of the approaches being discussed in Congress (see here, here, and here) are a step towards solving this problem, but they are likely not the final answer. Given that the large patent litigation costs are the primary driver that forces companies to settle, mechanisms that reduce these costs or delay them until a patent holder can establish that it has brought a legitimate lawsuit may be part of the answer.

In addition, in the rush to rid the world of trolls, Congress needs to be careful that they don’t tip the balances in traditional, “legitimate” patent infringement lawsuits so as to make it unreasonably difficult for patent owners to enforce their patents against actual infringers. The bottom line is that there do not appear to be any easy answers to this problem.

$1Billion Pittsburgh Verdict Against Marvell Upheld on Post Trial Motions

marvell_chipPosted by Henry M. Sneath, Esq., Chair of the Intellectual Property group at Pittsburgh law firm Picadio Sneath Miller & Norton, P.C.

hsneath@psmn.com or 412-288-4013

Following a December 2012 Patent verdict in favor of CMU against Marvell in the amount of just over $1 Billion, the trial Judge Nora Barry Fischer of the USDC for the Western District of Pa. has denied the post trial motions filed by Marvell. Carnegie Mellon University v. Marvell Technology Group, Ltd., Case No. 09-290 (W.D. Penn. Feb 28, 2013). She has also found that the infringement was willful, but has not determined yet whether to multiply the verdict as an enhanced award.  The lengthy opinion is attached for review. More analysis to come and we will follow what is surely to be an appeal to the CAFC by Marvell. Opinion available only on PACER at the moment but we will search for an independent copy to post.

UPDATE: The full decision of the Court is available here.

Western District Analyzes Trademark Issues: Use in Commerce; Abandonment; and Doctrine of Foreign Equivalents

By: Joe Carnicella, an intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

On September 13, 2013, Judge Cercone of the Western District of Pennsylvania issued an opinion in Taza Systems, LLC v. Taza 21 Co., LLC, et al., No. 2:11-cv-073, 2013 U.S. Dist. LEXIS 130974 (W.D. Pa. September 13, 2013), covering various fundamental trademark topics.

Relevant Facts

Taza Systems is the owner of three service mark registrations on the Principal Register of the USPTO: (1) the word mark TAZA; (2) the word mark TAZA A LEBANESE GRILL; and (3) the design mark TAZA A LEBANESE GRILL.  These marks cover restaurant and bar services in International Class 43.  Taza Systems operates two restaurants in Woodmere, Ohio and Cleveland, Ohio.  In July 2008, Taza 21 opened a restaurant in Pittsburgh, Pennsylvania, under the names TAZA21, TAZA21 FRESH, and TAZA21 FRESH SHAWARMA CAFE.

Use in Commerce

Taza 21 asserted that Taza Systems’ registered marks were invalid and subject to cancellation because Taza Systems did not provide services in interstate commerce as required to justify registration under the Lanham Act.

According to the Lanham Act, 15 U.S.C. § 1051 et seq., a mark is used “in commerce” on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.  Commerce is defined to mean “all commerce which may lawfully be regulated by Congress.”  Because Congress’ authority under the Commerce Clause extends even to purely intrastate activity if that activity substantially affects interstate commerce, the Lanham Act’s authority includes the same.  The court discussed the term “in commerce” as it applies to restaurants located in a single state.  Some factors that have been deemed to satisfy the interstate commerce requirement include location near interstate highways, servicing customers from other states, advertisements in out-of-state publications and purchasing ingredients from out-of-state vendors.

The court determined that Taza 21 would have the burden of proving at trial that Taza Systems did not use the registered service marks “in commerce”, and in doing so, Taza 21 would have to produce evidence to contradict and overcome the rebuttable presumption of validity and ownership of the marks afforded to Taza Systems because it holds registration certificates for all three service marks.  The court concluded that Taza 21 failed to adduce sufficient evidence that could establish at trial that the service marks are not used in commerce.


Taza 21 asserted that Taza Systems’ marks were invalid and subject to cancellation because Taza Systems failed to police third-party uses of confusingly similar marks.

Under 15 U.S.C. § 1127, if a trademark or service mark becomes generic, or otherwise loses its significance as an indicator of source due to the conduct of the owner, it can be deemed legally abandoned.  A mark can also be deemed legally abandoned if the owner discontinues use, with an intent not to resume it.  However, a party arguing for abandonment has a high burden of proof because abandonment, being in the nature of a forfeiture, must be strictly proved.  A “failure to police” a mark is one type of owner conduct that is commonly assumed to result in abandonment.  However, in order to prove this type of abandonment, the challenger must establish that the presence of third-party users in the marketplace resulted in what is described as a “loss of trade significance,” which is another way of saying that a mark is no longer distinctive because it fails to identify and distinguish the services of one person from the services of others and to indicate the source of the services.  As a reminder, the distinctiveness of a mark is evaluated by four categories: (1) arbitrary or fanciful; (2) suggestive; (3) descriptive; and (4) generic.  The first two categories are inherently distinctive and are afforded protection under the Lanham Act automatically; the third type of mark must acquire distinctiveness as an identifier of the source of goods or services before it can be eligible for protection; the fourth category of marks is never protected as a mark.

The court analyzed Taza 21’s evidence, which consisted of only a list compiled by counsel of 51 businesses that included TAZA in their name and an excerpt from a Thomson CompuMark Trademark Research Report issued to Taza Systems’ attorney seven years prior, and determined that such evidence did nothing to establish that Taza Systems’ marks lost their significance as an indicator of the source of its restaurant and bar services.  According to the court, the evidence did nothing more than establish that, at one point in time, various businesses across the United States may have used the word TAZA in their names and that those businesses ranged from coffee shops and restaurants to blown glass manufacturers and residential building contractors.  Moreover, the court applied the Dawn Donut Rule (see Dawn Donut Comp. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959)) and concluded that, because these third parties use their marks in geographically “separate trading areas” and there was no evidence that Taza Systems had imminent plans to expand into the third-party user’s territory, no public confusion was likely.  The court ruled that Taza 21 failed to submit evidence sufficient to establish that the moniker TAZA had become generically descriptive of restaurant services as a result of Taza Systems’ failure to police the market.

Descriptiveness – Doctrine of Foreign Equivalents

Taza 21 asserted that Taza Systems’ marks were invalid and subject to cancellation because the marks were merely descriptive upon application of the doctrine of foreign equivalents.

Registration of a mark on the Principal Register constitutes prima facie evidence of the validity of a trademark and of the owner’s exclusive right to use it in commerce.  However, if a challenger comes forward with evidence to establish that the mark was erroneously registered, the registration can be cancelled or otherwise invalidated.  Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine whether they are generic or descriptive.  However, this doctrine applies only if the ordinary American purchaser would stop and translate the mark into English.  When it it unlikely that an American buyer would translate the foreign mark, either because of unfamiliarity with the foreign word or association of the word with its foreign language through decor, the doctrine does not apply.

During prosecution of its marks, Taza Systems disclosed that the word “taza” translates from the Lebanese dialect of Arabic to English as “fresh,” and each of the registration certificates explicitly reflects this translation.  Taza 21 submitted as evidence printouts from various on-line dictionaries reflecting that “taza” translated from Hindi to English as “fresh” and “green,” that “taze” translated from Turkish to English as “fresh” and “youthful,” and “taza” translated from Persian to English as “fresh, young, new.”

The court analyzed this limited evidence and determined that Taza 21 failed to adduce any evidence that would allow a reasonable juror to overcome the presumption of validity afforded to Taza Systems by its federal registrations and to conclude that the ordinary American purchaser would deem the mark TAZA to be descriptive of “restaurant and bar services.”  The court opined that, because the mark TAZA appeared in the context of a restaurant that serves Lebanese food, plays Lebanese music and is decorated with Lebanese decor, a reasonable juror could find that the ordinary American purchaser would not be prompted to translate the mark TAZA, thereby making the doctrine of foreign equivalents inapplicable.  Moreover, even assuming that the doctrine of foreign equivalents might apply, the court determined that Taza 21 failed to produce evidence that the doctrine would invalidate the marks.  In making this decision, the court considered certain statistics, which demonstrated that only a very low percentage of the U.S. population speaks Arabic, and concluded that the ordinary American purchaser would not stop and translate the term TAZA into English.  The court also considered the pages from the various dictionaries submitted by Taza 21 and determined that such evidence would not invoke the doctrine because there are multiple translations and varying foreign spellings and pronunciations.  Finally, assuming arguendo that Taza 21 could establish that the ordinary American purchase would stop and translate “taza,” the court held that no reasonable juror could conclude that “fresh” is a word used to describe restaurant and bar services.  Although “fresh” could be suggestive of the type of products or ingredients used at a particular restaurant, as opposed to another, suggestive marks are inherently distinctive and entitled to trademark protection.  The court held that the Taza Systems’ registrations for “fresh” do not remove an inevitably descriptive or generic word for restaurant or bar services in a foreign language from public use in the United States.

Sharing a Publication at Work May Constitute Copyright Infringement

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

wd-pa-courthouseDo you work in an office that receives a single copy of a trade publication, which is passed around the office for multiple people to read?  Be careful because such use may constitute copyright infringement—at least that is what one publisher argues.

In Energy Intelligence Group, Inc. v. The United Steel, Paper and Forestry, Rubber, Manufacturing, Energy, Allied Industrial and Service Workers International Union, AFL-CIO/CLC (“USW”), Civ. Action. No. 11-00428, 2013 U.S. Dist. LEXIS 123080 (W.D. Pa. Aug. 29, 2013) (Judge Conti), Energy Intelligence Group, Inc. and Energy Intelligence Group (UK) Limited (collectively “EIG”) filed suit to seek damages from Defendant USW for sharing its single subscription to the “Oil Daily” with multiple USW employees.  USW, located in Pittsburgh, Pennsylvania, is a labor organization, which provides collective bargaining services to its union members.  USW subscribed to the Oil Daily, beginning in 1992.  From 1992 to 1999, the Oil Daily was sent in paper copy.  Starting in 1999, EIG began sending the Oil Daily in electronic form.  USW subscribed to the Oil Daily through a subscription agent, EBSCO Information Services (“EBSCO”).

EIG’s suit involves 2,880 issues of the Oil Daily, which were published from December 1999 to March 2011.  EIG owns valid U.S. copyright registrations for each of these publications and provides copyright notices on its website, articles, emails and publications, including on the Oil Daily itself.  In February 2006, EIG sent a letter to all subscribers informing them that single-user subscriptions were not to be shared by multiple readers.  This letter was not sent directly to USW but was sent to EBSCO.  However, the court determined that EBSCO was USW’s agent and this constituted notice to USW, as well as EBSCO.

Mary Dimoff, USW’s librarian, was the sole subscriber to the Oil Daily.  When she received the Oil Daily in hard copy, she maintained a list of USW recipients to receive the Oil Daily, and she routed the paper to these individuals over the course of three to four days.  When Ms. Dimoff started receiving the Oil Daily in electronic form, she forwarded it to the recipients via email.  Through various communications with EIG and EBSCO, Ms. Dimoff revealed to EIG that she was sharing her subscription, and EIG filed suit.

USW conceded that it copied and distributed the 2,880 issues of the Oil Daily.  However, USW asserted that it was permitted to do so based upon several different defenses including, implied license, equitable estoppel, fair use, and laches.  USW also argued that damages should be limited to the three-year period prior to the filing of the complaint.  The parties filed cross motions for summary judgment on the defenses and the damages issues.

The court held that factual issues precluded the entry of summary judgment on all but one issue which was the equitable estoppel defense.  The court concluded that it would be impossible for USW to prove that the equitable estoppel defense applied because it could not prove all four factors necessary to establish such a defense: (1) the plaintiff had actual or constructive knowledge of the defendant’s infringing conduct; (2) the plaintiff intended or expected that defendants would act on the plaintiff’s misrepresentations or concealments; (3) the defendant was ignorant of the true facts; and (4) the defendant relied on the plaintiff’s conduct to its injury.

The court found that USW had sufficient evidence to prove that EIG had at least constructive knowledge of the infringing conduct for approximately three years before filing suit and thus, met the first factor.  However, USW could not prove the last three factors.  As for the second factor, the court determined that EIG did not misrepresent or conceal its intent to assert its copyrights because it affixed its copyright notice on every edition of the Oil Daily.  With respect to the third factor, the court rejected USW’s argument that it acted innocently because it had the notice of the copyright on the Oil Daily and because USW never followed up with EBSCO or with EIG to confirm if its actions were permissible.  Finally, the court held that USW could not show that it relied on EIG’s conduct to its detriment because EIG provided the copyright notice directly on the Oil Daily and sent its terms and conditions to EBSCO.  Therefore, EIG made no misrepresentations and did not conceal its copyrights.

The Energy Intelligence Group case is an interesting copyright case.  For more details on the other defenses and the factual issues raised, you can read the entire case here.

GAO Issues Report on Patent “Troll” Litigation

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

GAO SealLast Thursday, the U.S. Government Accountability Office (GAOissued a report on patent infringement litigation and recommended steps that may be taken to improve both litigation and the patents themselves. The 61-page report, entitled “INTELLECTUAL PROPERTY: Assessing Factors That Affect Patent Infringement Litigation Could Help Improve Patent Quality,” makes a number of recommendations, as well as providing a background in this area, including statistics summarizing recent trends in patent litigation.

We’ll be taking a look at this report in more detail and providing some commentary on it in the near future as a part of our ongoing analysis of the issues presented by NPE/PAE/patent troll litigation.

Fed Circuit Upholds Verdict and Sanctions Against NPE

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Federal CircuitThe Federal Circuit issued an opinion in Taurus IP, LLC v. DaimlerChrysler Corp. (No. 2008-1462), upholding a verdict in favor of a technology user in the continuing patent wars between non-practicing entities (NPEs) and companies. Judge Schall delivered the opinion of the Court, joined by Judges Prost and Reyna.

The case involved two separate actions—one for patent infringement and one for a breach of warranty involving a prior settlement agreement between the parties. In the patent action, the Federal Circuit affirmed the district court’s determination that Taurus’s patent was invalid, that defendants did not infringe, and that the case was exceptional because plaintiff failed to conduct proper due diligence and filed a frivolous lawsuit. In the breach of warranty action, the Court affirmed the finding that the court had jurisdiction over the parties, that plaintiff and related third parties (Orion IP, LLC and Erich Spangenberg) breached the warranty provisions, and that two of the third parties engaged in witness tampering. The Court affirmed-in-part and reversed-in-part the damage awards relating to defendants’ attorneys’ fees.


The case has a rather long and convoluted history, starting with a different lawsuit back in 2004.

Orion (an NPE owned by Spangenberg) sued DaimlerChrysler and Mercedes in 2004. Prior to filing suit, it acquired the rights to a patent (the ‘658 Patent) that would be at issue in the later lawsuit. To resolve the 2004 case (which involved different patents), the parties entered into a settlement agreement in 2006. Under that agreement, Orion warranted that had not assigned any patent rights relating to the 2004 litigation. However, five days after filing the 2004 lawsuit, Orion assigned the ‘658 Patent to another of Spangenberg’s companies and did not disclose that fact.

In 2007, Taurus (another NPE) acquired the rights to the ‘658 Patent from one of the many Spangenberg companies. Taurus then filed suit against DaimlerChrysler and Mercedes 10 days later. This is the case that was on appeal before the Federal Circuit.

The ‘658 Patent involved a “a computer system for managing product knowledge related to products offered for sale by a selling entity.” Taurus alleged that defendants infringed the patent through their internal and external web sites that allowed customers to select various options on different car models and then see if any dealers had that configuration available for sale in the area.

The District Court’s Rulings

The district court issued a claim construction that was unfavorable to Taurus. The court then granted summary judgment in favor of defendants, finding that defendants did not infringe and that the asserted claims of the patent were invalid in light of prior art that pre-dated the earliest conception date that Taurus could prove. In addition, the court found that the case was an exceptional case that warranted an award of defendants’ attorneys’ fees.

The court found that Taurus failed to conduct a proper due diligence before filing suit, that there was no reasonable basis to believe that defendants infringed, and that Taurus needless prolonged the litigation in bad faith. The court then awarded over $1,600,000 in attorneys’ fees.

With respect to the breach of warranty claims, the court found that it had jurisdiction over all of the parties and denied Taurus and the third-party defendants’ attempts to dismiss the claims. A jury then found for DaimlerChrysler and Mercedes. On post-trial motions, the court found damages caused by the breach in the amount of almost $2,500,000 for the costs incurred to defend the patent infringement lawsuit and $ 1,300,000 in attorneys’ fees relating to the breach of warranty claims.

In addition, the court found that Erich Spangenberg and an attorney working with him attempted to tamper with a witness. The attorney used to represent DaimlerChrysler in prosecuting its patents, but left to work for one of Spangenberg’s companies during the course of the litigation. Spangenberg contacted the attorney and told him that he believed that one of DaimlerChrysler’s witnesses was going to commit perjury and that the attorney should take steps to deal with it. The attorney then called and sent the witness a letter “reminding” the witness of certain “facts.”  The attorney never indicated that he worked for Spangenberg.

When this contact came to light, the court conducted a closed hearing to address what happened and what should be done. The court ultimately concluded that (1) the communications were designed to intimidate the witness and influence his testimony, (2) that the attorney should have been screened from the case due to his prior employment with DaimlerChrysler, (3) that the “facts” were not supported by the record. As a sanction, the court prevented Spangenberg and his companies from evoking testimony refuting one of the elements to the breach of warranty claim.

The Federal Circuit Mostly Affirms

On appeal, the Federal Circuit affirmed all of the patent infringement-related issues in full. It upheld the claim construction, the non-infringement ruling, the invalidity ruling, and the award of attorneys’ fees.

With respect to the breach of warranty issues, the Federal Circuit largely affirmed, including the witness tampering sanctions, but did reverse on the issue of the damages for a lack of evidence presented at trial.


This was a fairly convoluted case before the Federal Circuit. While the lengthy opinion makes for an interesting read, there are some high-level take aways. First, Chief Judge Rader has repeatedly indicated that district courts should exercise their inherent and statutory powers to sanction NPEs and other litigants that bring frivolous patent infringement lawsuits. The district court apparently took that to heart and the Federal Circuit backed her up. Second, the failure to conduct appropriate pre-filing due diligence proved very costly to plaintiff. Finally, parties need to be very careful before communicating (or inducing another to communicate) with an opposing witness prior to testifying, as the sanctions can be devastating to a case.

Preliminary Ruling Okaying Use of Copyrighted Articles During Patent Prosecution as Fair Use

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Magistrate Judge Jeffrey J. Keyes from the U.S. District Court for the District of Minnesota issued an important report and recommendation affirming the ability of patent attorneys to use copyrighted articles during patent prosecution (e.g., to submit them to the USPTO to fulfill disclosure requirements) as fair use.


In American Institute of Physics, et al. v. Schwegman Lundberg & Woessner, P.A.  (No. 12-cv-00528), various publishers sued a law firm that had copied their copyrighted scientific articles in order to assess whether the articles were prior art and, if they were, sent copies to the USPTO to fulfill its obligation to disclose prior art. The publishers originally argued that any use by the law firm of these articles without payment constituted copyright infringement. However, they dropped their claims as to the firm’s (1) making copies to be sent to the USPTO, (2) sending copies to the USPTO, and (3) retaining one copy for its files. They continued their infringement claims as to the downloading of the articles, making other copies that existed in the firm’s files, and distributing the copies to its clients or others in the firm. The law firm argued that none of these actions infringed because of the fair use exception.


In assessing the applicability of the fair use defense, a court must consider (1) the purpose and character of the accused infringer’s use, (2) the nature of the copyrighted work, (3) the amount of used, and (4) the effect of the copying on the relevant market.

The Court determined that the nature and purpose of the firm’s use was different from that of the publishers. The publishers publish the works for the betterment of science and to allow other scientists to test and validate the authors’ findings. In contrast, the firm used the articles to satisfy a legal requirement of disclosure to assist the USPTO in determining whether an invention was new and novel. The Court further found that the intended audience for the two parties was different and did not overlap. The publishers’ audience was scientists, students, libraries, etc., whereas the firm’s audience was the USPTO and lawyers in the firm.

The Court also considered the nature of the articles to slightly favor the law firm. Because the articles were primarily factual and informational in nature, they fell a bit further from the creative types of expression more strongly protected by copyright law.

The Court looked at the amount of use and also concluded that, despite the copying of the entire article, this factor also favored the law firm. In order to satisfy its obligation of disclosure, the firm had to use the entire article. Thus, its entire use was consistent with its allowed purpose.

Finally, the Court looked to whether there were any other factors that might favor either party. It concluded that the law firm’s use was consistent with the overriding Constitutional basis for both the patent and copyright laws, which is to promote the progress of the science and useful arts. Such copying ultimately furthered this objective and the public good by assisting the USPTO in weeding out improper patents.

Ultimately, in weighing all of the factors, the Court concluded that the law firm’s use of the copyrighted articles was fair use and not copyright infringement.