IPO Daily News™
Wednesday, March 4, 2015
* * COURT ERRED IN AWARDING LOST PROFITS DAMAGES FOR PATENT INFRINGEMENT
Warsaw Orthopedic, Inc. v. NuVasive, Inc. 13-1576 — On Monday in an opinion by Judge DYK, the Federal Circuit vacated a district court’s award of patent infringement damages. Warsaw claimed spinal implants and methods and devices related to minimally invasive spinal surgery. It argued it suffered lost profits from three income sources including convoyed sales of surgical rods and screws (“fixations”), certain royalty payments, and “true-up” payments related to an inter-company transfer pricing agreement. NuVasive was ordered to pay $101million in “Lost Profit Damages (with royalty remainder).”
The award of lost profits was improper. The sales of the fixations were not recoverable as lost profits because Warsaw failed to prove a functional relationship between the sales and the patented products. The royalty and true-up payments were not recoverable because they were not “lost sales of a product or service that [Warsaw] itself was selling.” Warsaw was entitled, however, “to a reasonable royalty sufficient to compensate it for … the value of the patented technology.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
FEDERAL CIRCUIT JUDGES TO SPEAK AT PTO DAY ON MARCH 10
A session on patent case law developments of the last year and how USPTO examiners and applicants can think about and apply them in their work will kick off the morning of PTO Day. The one-day conference will be held on March 10 at the JW Marriott in Washington, DC. The first half of the session will focus on bio/life sciences. Moderated by PROF. JOHN WHEALEN, George Washington University, speakers include HON. RAYMOND CHEN and HON. TODD HUGHES, U.S. Court of Appeals for the Federal Circuit; PAUL BERGHOFF, McDonnell Boehnen Hulbert & Berghoff LLP; and SCOTT WEIDENFELLER, USPTO. For more information or to view the full program, visit www.ipoef.org/pto15.
SENATOR COONS INTRODUCES PATENT LITIGATION BILL
Yesterday U.S. Senator CHRIS COONS (D-Del.) introduced patent litigation reform bill S. 632 that differs substantially from Rep. BOB GOODLATTE’s bill H.R. 9, which was introduced in the House last month. S. 632, the “Support Technology & Research for Our Nation’s Growth Patents Act of 2015” (STRONG Patents Act) focuses on reforms to the USPTO’s Inter Partes Review and Post Grant Review proceedings, empowers the Federal Trade Commission to crack down on abusive patent demand letters, eliminates diversion of USPTO user fees, and creates or expands a handful of programs to assist small businesses.
Among the reforms to post grant proceedings, the bill would change the claim-construction standard used by the Patent Trial and Appeal Board to the standard used in district court litigation. IPO supports this provision. The bill addresses the ability of patent holders to amend claims, petitioners’ burden of proof, standing to file a petition in IPR and PGR proceedings, discovery of real party in interest, the ability of a patent-holder to present evidence at the initiation of a proceeding, and coordination of post grant proceedings with other USPTO proceedings.
S. 632 incorporates the 2014 bill sponsored by former House Energy & Commerce subcommittee chairman LEE TERRY (R-Neb.) to address abusive patent demand letters. S.632 eliminates fee diversion through the establishment of a new USPTO revolving fund in the U.S. Treasury. IPO has long supported legislation to permanently end fee diversion.
For the text of S. 632, click here.
FEE SHIFTING REPORT: ATTORNEY FEES AWARDED TO DEFENDANTS IN PATENT INFRINGEMENT SUIT
On February 27 Judge ROSENTHAL in the U.S. District Court for the Southern District of Texas ordered patent infringement plaintiff Techradium, Inc. to pay a total of about $113,000 in attorney fees and costs to defendants FirstCall Network Inc. and the City of Friendswood.
USPTO CANCELS CONTROVERSIAL “SAWS” PROGRAM
On Monday the USPTO announced its decision to retire the Sensitive Application Warning System (SAWS) that allowed patent examiners to alert leadership when a patent might issue on a sensitive matter. The agency said it will seek public input as part of its new quality initiative on whether there were any quality-enhancing features of the program not captured through the typical examination and prosecution process. The agency committed to disclose to the public any new programs developed through that process before they are implemented.
TRADEMARK APPLICATIONS, REGISTRATIONS INCREASE AT SIMILAR RATES
In 2014, 455,017 applications to register trademarks were filed at the USPTO, a 5% increase from 2013. 279,282 registrations were granted. This represents an 8% increase from 2013.
ANAND & ANAND JOINS IPO
Anand and Anand Advocates of New Delhi, India (primary contact ARCHANA SHANKER) has become a law firm member of IPO.
IP IN THE MASS MEDIA
Judge Grants Google Preliminary Injunction Against Mississippi Attorney General
Yesterday Ars Technica reported that a federal judge in Mississippi granted Google Inc.’s petition for a preliminary injunction to stop the state’s attorney general from investigating the company for violating copyright and other laws.
Study Finds NPE Litigation Does Not Help Inventors
Yesterday The Economist reported on a recent Harvard Business School report finding that while litigation by non-practicing entities, or NPEs, can transfer profits to inventors, most profits from such litigation goes to NPEs or their attorneys and not 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.
Innovator InsightsDr. Hugh Herr: 2014 Inventor of the Year
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