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Monday, July 6, 2015

July 6, 2015

Federal Circuit Summaries Logo

* * * NO LOST PROFITS DAMAGES FOR CONDUCT OUTSIDE U.S. DESPITE PATENT INFRINGEMENT UNDER SECTION 271(F)

WesternGeco, LLC v. ION Geophysical Corp. 13-1527 — On Thursday in an opinion by Judge DYK, a split Federal Circuit overruled in part a district court judgment awarding WesternGeco more than $90 million in lost profits for conduct outside the U.S. The patents claimed systems for searching beneath the ocean floor for oil and gas. The district court found that ION infringed under Patent Act section 271(f). WesternGeco argued that but for ION’s infringement it would have been awarded at least ten overseas contracts for extracting oil, which would have generated over $90 million in profit.

The Federal Circuit held that lost profits cannot be awarded for lost contracts for services to be performed outside the U.S. “The presumption against extraterritoriality is well-established and undisputed.” Liability under section 271(f) attaches in the U.S. at the time of export, not to subsequent use abroad. Judge WALLACH filed a 19-page dissent in which he argued that precedent and the statute required considering the foreign sales as part of the damages calculation.
(1 to 4 stars rate impact of opinion on patent & trademark law)

2015 IPO ANNUAL MEETING EXHIBITORS

The 2015 IPO Annual Meeting will feature an exhibit area that will be open 7:00a.m.-4:00p.m. on Monday and Tuesday, September 28 and 29. To view a list of this year’s exhibitors, click here.

Federal Circuit Summaries Logo

* * SUPPLIER’S SALE OF “MANUFACTURING SERVICES” INVALIDATED PRODUCT-BY-PROCESS PATENT CLAIMS

The Medicines Company v. Hospira, Inc. 14-1469 — On Thursday in an opinion by Judge HUGHES, the Federal Circuit overturned a district court finding that Medicines’s claims were not invalid under pre-AIA Patent Act section 102(b). The patents included product-by-process claims for making pharmaceutical batches of the anti-coagulant drug bivalirudin, sold under the brand Angiomax®. More than one year before filing the patent applications, Medicines hired a supplier to prepare three commercial batches of the drug using an embodiment of the claimed processes. The district court concluded this was not a commercial sale because the supplier sold only “manufacturing services.”

The court erred, however, in finding that the batches were not “sold” to Medicines. Medicines paid the supplier “for performing services that resulted in the patented product-by-process, and thus a “sale” of the services occurred.” Medicines could not “circumvent the on-sale bar simply because its contracts happened to only cover the processes that produced the patented product-by process.” There was no experimental use exception, because the batches were prepared for “commercial exploitation.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

ATTORNEY FEE SHIFTING IN PATENT SUITS IN U.S. DISTRICT COURTS: WEEKLY REPORT

On July 2 the Court of Appeals for the Federal Circuit in a nonprecedential opinion reversed a decision of the Southern District of Ohio in which the district court granted attorney fees to the accused infringer. Buckhorn Inc. v. Orbis Corp.

IPO COMMITTEE CALLS THIS WEEK

Tuesday, July 7

Trade Secrets – 2:30p.m. ET
U.S. Patent Office Practice – 4:00p.m. ET

Wednesday, July 8

Asian Practice – 9:30a.m. ET
Litigation – 2:00p.m. ET
Damages and Injunctions – 2:00p.m. ET
Domain Names and Social Media – 3:00p.m. ET
U.S. Trademark Office Practice – 4:00p.m. ET

Thursday, July 9

U.S. Trademark Law – 2:00p.m. ET
IP Licensing – 3:00p.m. ET

Friday, July 10

U.S. Patent Law – 1:00p.m. ET

To join one of IPO’s 29 Standing IP Committees, visit www.ipo.org/committeesignup.

IP IN THE MASS MEDIA

Japanese Law Gives Patent Ownership to Companies

On Friday Japan Times reported that the Japanese House of Councilors passed legislation that allows companies to obtain patents on their employees’ inventions as long as the companies inform employees of their intent to claim ownership in advance of doing so and provide sufficient remuneration to the inventors.


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.