Posts Tagged ‘intellectual property’

Supreme Court to Review Post-Expiration Date Royalties in Kimble v. Marvell

Friday, December 12th, 2014

Despite a negative brief from the Solicitor General’s Office, on Friday the Supreme Court granted cert. in Kimbell v. Marvell, 727 F.3d 856 (9th Cir. 2013) (a copy can be found at the end of this post). The single question presented is “Whether the Court should overrule Brulotte v. Thys” (379 U.S. 29 (1964)). This decision held that a patentee’s use of a royalty agreement extending royalty payments beyond the expiration date of the patent is unlawful per se. This decision had, in some cases, been extended to void licensee’s contract obligations when “hybrid royalty payments” where involved, e.g., when royalties due to both the use of patent and non-patent rights were involved but had not be clearly delineated, and in the case of deferred payments for profits obtained before patent expiration, but paid after expiration. On the other hand, cases like Aronson, which provided for reduced royalties after a fixed period of time if no patent ever issued, were found to be enforceable, since such agreements did not involve patent licenses.

Brulotte has been widely criticized since it issued – after all, expired patents can be practiced for free by any and all – unless a licensee sees something of value and contracts away its rights – and the Supreme Court may well have taken this case due to the cogent summary of the issues by the 9th Circuit. The decision, due in 2015, will be of particular interest to the “patent and licensing offices” of universities, which have long struggled with questions of best practices in obtaining some royalty stream from early-stage technologies whose maximum earning potential may not be realized until the patents covering them have expired, or are about to expire.

Kimble v Marvel

Commil USA v. Cisco Systems – Induced Infringement In For Clarification

Monday, December 8th, 2014

Supreme Court granted cert. to resolve the question of whether or not a defendant’s belief that a patent is invalid is a defense against a charge of inducing infringement. The question appears to rest on Judge Newman’s characterization given in her dissent from the majority opinion (Proust, O’Malley). (A copy of this decision can be found at the end of this post.) However, the majority opinion appears more nuanced to me:

“Under our case law, it is clear that a good-faith belief of non-infringement is relevant evidence that ends to show that an accused infringer lacked the intent required to be held liable for induced infringement.”

I read this as simply stating that the belief can provide evidence of lack of specific intent to induce acts of infringement. The evidence may be “strong,” such as a competent opinion rendered before the offending acts, or “weak,” e.g. the opinion of a non-attorney or a just incompetent opinion. In fact, the majority makes an effort to “spank”‘ Judge Newman in footnote 1:


Federal Circuit flips on Ultramercial v. WildTangent

Friday, November 14th, 2014

After two trips to the Supreme Court and two remands, the Federal Circuit considered Ultramercial v. WildTangent for the third time—this time with Alice in hand—and ruled that the district court properly dismissed Ultramercial’s suit as failing to state a claim, since its patent (U.S. Pat. No. 7,346,545) does not claim patentable subject matter.

As you almost certainly recall, the patent was directed to a “method for distribution of products over the Internet” whereby a consumer was given access to “a media product” if the consumer viewed an ad. While the claim contained 11 steps, the court boiled it down to “showing an advertisement before delivering free content” or “using advertisement as an exchange or currency.” Under step (1) of the Mayo analysis, this was found to be an abstract idea.


C.I.T. v. Hughes Comm. – Survival Guide for Software?

Thursday, November 13th, 2014

On November 3, 2014, in Cal. Inst. Of Tech. v. Hughes Communications., 2014 U.S.. Dist. LEXIS 156763 (C.D. Cal. 2014), Judge Mariana Pfaelzer penned the most thorough defense of software claims attacked under s. 101 that I have seen since State Street Bank. The opinion is also useful since it both continuously cites – and often distinguishes or explains Mayo—and because it is very critical of the analytical framework employed by the same court in McRO (Planet Blue) v Namco, a September decision on which I posted earlier. (A copy of this decision can be found at the end of this post.)

The heart and soul of the opinion is the Judge’s dismissal of the “point-of-novelty” approach that she finds was used in McRO, as opposed to “purpose” test that she applies in this opinion: