The U.S. Justice Department and the FBI have combined to identify at least two of the perpetrators from REvil of the July 2021 ransomware attack on software giant Kaseya and have not only issued indictments, but also captured some of the ransom money paid. One suspect is being held in custody in Poland awaiting extradition. Hear the latest on our PIT IP Tech Cast.
Not surprisingly, with the massive sale and transport of goods through Amazon and Alibaba, we are seeing and handling in the courtroom litigation world a lot of actions involving alleged counterfeiting and resultant sales of products on these website marketplaces. These claims involve the freezing of the Amazon Sellers’ financial accounts with Amazon through Federal Court Temporary Restraining Orders (TRO’s) and preliminary injunctions and are being brought primarily pursuant to Federal Statutory Law, potentially allowing for recovery of attorneys fees and punitive damages. These cases are being filed as though they were class actions or mass tort cases, and involve sometimes hundreds of defendants. Most defendants suffer judgment against them by default for failure to answer the complaint, even though the courts are waiving normal service of process rules and are allowing service of the complaint on these defendants by email. Many are foreign entities with fictitious names and in many cases they choose simply to forfeit the amount of money that they have in their Amazon account. Their entire Amazon account is frozen even if the allegedly infringing sales are very small and make up only a small portion of their Amazon funds. These suits fall generally into two camps:
While these two variations sound similar, they each require a solid understanding of either or both, the Lanham Act/Trademark Law or an understanding of patent law on infringement and USPTO proceedings. There are actions filed in the US District Court for the Western District of Pennsylvania and in many other federal jurisdictions. Our Houston Harbaugh law firm intellectual property group which I chair is prepared to prosecute or defend these matters and I can be reached at firstname.lastname@example.org or 412-288-4013.
The U.S. Supreme Court ruled today that U.S. Patent and Trademark Office (“USPTO”) decisions on the timeliness of administrative patent validity challenges are not appealable to Article III courts.
Inter partes review proceedings give an accused infringer the right to challenge the asserted patent’s invalidity before the USPTO, provided that such challenges are timely filed within one year of the complaint for patent infringement. The Supreme Court ruling in Thryv v. Click-to-Call Technologies gives the USPTO almost unfettered authority to decide whether a party properly sought review under the America Invents Act (“AIA”) within the one year, or was in privity with a supplier, business partner or other party who had been sued. The ruling is a blow to patent owners, who have frequently challenged inter partes review proceedings on those grounds and won at the U.S. Court of Appeals for the Federal Circuit.
But letting patent owners tie up proceedings with timeliness appeals cuts against the AIA’s goal of weeding out bad patent claims efficiently, Justice Ruth Bader Ginsburg wrote for 7-2 majority. Doing so would “tug against that objective, wasting the resources spent resolving patentability and leaving bad patents enforceable,” Ginsburg wrote.
Justice Neil Gorsuch dissented, arguing that the time-bar is “both a constraint on the agency’s power and a valuable guarantee that a patent owner must battle the same foe only once,” and the PTO should not have “freewheeling authority” to interpret it.
The case is Thryv Inc. v. Click-To-Call Technologies LP, case number 18-916, in the Supreme Court of the United States.
Carissa T. Howard is an intellectual property attorney with over 16 years of experience, Carissa’s practice is focused in federal court intellectual property litigation, patent prosecution, trademark prosecution, intellectual property counseling, and contract drafting. She also has experience in intellectual property licensing and preparing due diligence, infringement and validity opinions. She can be reached at email@example.com or 412-288-2213
Posted by Henry M. Sneath, Esq. – Chair of the Intellectual Property Group at Picadio Sneath Miller & Norton, P.C. (PSMN® and PSMNLaw®) in Pittsburgh, Pa. He may be contacted at firstname.lastname@example.org or 412-288-4013. Website www.psmn.com or www.psmn.law
From “ars technica“* publication: One of the largest patent verdict cases ever was obtained by Carnegie Mellon University (CMU) in Pittsburgh Federal District Court in 2012 in the courtroom of the Hon. Nora Barry Fischer as presiding judge. CMU won a $1.17 billion jury verdict in 2012 and the court enhanced the verdict to $1.54 Billion. The Federal Circuit cut the win significantly, by reducing the damages and eliminating the enhanced damages award, but kept the main verdict intact. The case was just settled here in Pittsburgh for $750 Million. It will allegedly be the second largest payment ever in a technology patent case. A thorough article on the matter with good links to the case history appears at web publication ars technica*(http://tinyurl.com/zwb26wg ).
On January 23, 2013, the Federal Circuit in Rexnord Industries LLC v. Kappos (2011-1434) determined that the USPTO Board of Patent Appeals and Interferences (the “PTO Board”) erred when it declined to consider arguments that were made to the patent examiner but not raised on appeal to the PTO Board.
Habasit Belting, Inc. filed a patent infringement suit against Rexnord Industries LLC with respect to U.S. Patent No. 6,523,680 (the ‘680 patent), wherein Rexnord requested inter partes reexamination of the ‘680 patent. On reexamination, the examiner held all of the claims in the ‘680 patent unpatentable for anticipation and obviousness based on four prior art references cited by Rexnord. However, on appeal by Habasit (the appellant regarding the reexamination decision), the PTO Board held the claims patentable. As a result of the PTO Board’s reversal, Rexnord (the appellee regarding the reexamination decision) requested rehearing and argued that the PTO Board overlooked a portion of the examiner’s analysis in rejecting the claims. The PTO Board denied the rehearing request.
Rexnord subsequently appealed the PTO Board’s decision and its refusal to review all of the arguments raised by Rexnord regarding the unpatentability of the ‘680 patent. On this appeal, the PTO argued that the PTO Board need not consider other grounds that had been presented during the reexamination if those arguments were not raised on the appeal to the PTO Board. However, the Federal Circuit concluded that Rexnord presented the prior art references to the examiner and that the references did not relate to a patentability issue again until after the PTO Board reversed the examiner. The Federal Circuit held that the correctness of the decision appealed from can be defended by the appellee on any ground that is supported by the record, whether or not the appellant raised the argument. In this matter, the Federal Circuit determined that Rexnord requested on rehearing that the PTO Board consider the other grounds in support of the examiner’s decision, and that the PTO Board erred in declining to consider the references presented for reexamination and in declining to consider Rexnord’s arguments in support of the examiner’s decision.
On December 17, 2012, U.S. District Judge Koh denied Apple’s request for a permanent injunction against Samsung. As a reminder, a jury awarded Apple $1.05 billion in damages in August after finding that Samsung had copied certain features of Apple’s iPhone and iPad. (See our earlier blog post summarizing this verdict). With respect to the court’s most recent ruling, Judge Koh followed the Federal Circuit’s heightened standard that requires patent-holders to show a direct link between lost market-share and a specific infringing feature of a competitor’s product. In fact, in a previous ruling related to another lawsuit between Apple and Samsung over the patented search technology used in Apple’s Siri feature, the Federal Circuit overturned Jodge Koh’s decision to grant a preliminary injunction against Samsung’s Galaxy Nexus phone. In the present matter, Judge Koh found that Apple’s evidence for injunctive relief fell short of the strict “causal nexus” standard because the lawyers did not prove that the copied features specifically drove consumers to buy Samsung devices.
Some attorneys believe that Apple’s main objective was to block Samsung’s sale of its products and not to obtain a financial remedy. In this regard, attorneys are of the opinion that the record verdict was a mere slap on the wrist to Samsung, which generates approximately $100 billion in annual revenues. Nonetheless, this recent ruling has a significant impact on the parties’ leverage in the mobile patent litigation arena.
Posted By PSMN: Here is the take on this weeks Senate Judiciary Committee Action on the Patent Reform Act as reported by AIPLA DIRECT®:
Legislation/Patent Reform Senate Judiciary Approves Patent Reform Bill 15-0
The Senate Judiciary Committee on February 3, 2011, approved 15-0 the “Manager’s Amendment” to S. 23, patent reform legislation that would, among other things, implement a first-inventor-to-file system, revise provisions on damages awards, create a new post-grant review system, and grant the PTO fee setting authority.
At the Judiciary Committee markup session, several amendments to the bill were approved (1) to delete provisions that would have addressed willful infringement; (2) to delete provisions that would have repealed the requirement that Federal Circuit judges reside within 50 miles of the District of Columbia; and (3) to add a provision addressed to Holmes Group v. Vornado Air Circulation Sys., 535 U.S. 826 (2002), defining the Federal Circuit’s exclusive appellate jurisdiction as including compulsory counterclaims arising under the patent or plant variety protection laws.
AIPLA President David Hill said “the Senate Committee’s action is very encouraging, and Senator Leahy’s comments about his cooperation with the leadership in the House have us hopeful that patent reform may soon become a reality.” Referring to next week’s planned hearing in the House on reform legislation, AIPLA Executive Director Q. Todd Dickinson said “We are pleased that both houses are taking up patent reform so soon after convening, which we hope is a positive sign about eventual passage.”
Yet to be resolved are two important proposals: (1) provisions to give the PTO funding that protects against diversion of its fee revenue; and (2) a proposal to create a special reexamination procedure to reconsider the business method patents under Sections 101 and 112 of the Patent Act.
Some other changes have been made to the legislation to refine and clarify language or to make changes that conform to other provisions. For example:
Amendments to Section 292(b) in S. 515 would have eliminated qui tam actions for false marking, allowing only actions for those suffering competitive injury; S. 23 would now also amend Section 292(a) to expressly state that only the United States may bring a penalty action under that provision;
Section 32 on the statute of limitations for PTO actions against attorneys for misconduct no longer runs from discover, whenever that occurred; now the provision states that proceedings must begin either within 10 years of the misconduct or 1 year after the misconduct is discovered, whichever is earlier; and
Language in Section 282 on the presumption of validity which cross referenced Section 103(b) is deleted because Section 103(b), addressing patented processes to make biological products, would be repealed based on case law development and non-use of this provision.
To read the Manager’s Amendment approved by the Senate Judiciary Committee, click here.
Thanks to AIPLA DIRECT® for this report and update.
Contact our Pittsburgh Intellectual Property, Cyber and Data Security, Trade Secret, DTSA and Technology Attorneys at Houston Harbaugh, P.C. through IP and Litigation Sections Chair Henry M. Sneath at 412-288-4013 or email@example.com. While focusing first on health care and prevention issues for family, friends and employees, we are also beginning to examine the overall Covid Law related issues in business litigation, contract force majeure, trusts and estates litigation and insurance coverage issues that will naturally follow the economic disruption of the Covid-19 pandemic.
Some posts herein are from the HH-Law resources of PSMN® and PSMNLaw®. Business Litigation. Pittsburgh Strong® and DTSALaw®, PSMN® and PSMNLaw® are federally registered trademarks of HH-Law. See Firm Website at: https://www.hh-law.com/Professionals/Henry-Sneath.shtml
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