Supreme Court Dismantles $400M Apple Design Patent Award Against Samsung

In Samsung Electronics Co. v. Apple Inc., the Supreme Court of the United States today reversed the Federal Circuit’s decision upholding Apple Inc.’s nearly $400 million design patent award against Samsung Electronics Co., Ltd.  Apple secured the award after a jury found that Samsung infringed Apple’s design patents covering the iPhone’s iconic front face with rounded corners and 16 colorful icons on a black screen. Section 289 of the Patent Act permits a design patent holder to recover an infringer’s total profits from the sale of any “article of manufacture” to which the infringing design has been applied.  The Federal Circuit   Read More »

Posted in IP and Technology Litigation, Patent Litigation | Tagged , , , ,

Share this Article:

Supreme Court to Consider Patent Exhaustion for International Sales

Last Friday, the U.S. Supreme Court granted certiorari in the patent exhaustion case, Impression Products, Inc. v. Lexmark International, Inc., Docket No. 15-1189.  The Supreme Court’s decision in this case could significantly affect patent and patent-related transactions both domestically and internationally. Generally speaking, under the “patent exhaustion” doctrine, also known as the “first sale” doctrine, a patent holder’s rights in a patented item exhaust or terminate with the initial authorized sale of that patented item.  In other words, once a patented item is sold, the patent holder cannot control the resale, use, or other disposition of that item. Currently, however,   Read More »

Posted in Patent Litigation | Tagged ,

Share this Article:

Octane Fitness and Highmark Apply to Ninth Circuit Attorney Fee Awards under the Lanham Act

On October 24, 2016, the Ninth Circuit Court of Appeals, sitting en banc, held that district courts analyzing a request for attorney fees under the Lanham Act should consider the totality of the circumstances, as set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).  Section 35(a) of the Lanham Act provides that “he court in exceptional cases may award reasonable attorney fees to the prevailing party.”  In determining whether a case is “exceptional,” courts in the Ninth Circuit are now required to apply a less “precise rule or formula,” and look to   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged , ,

Share this Article:

FTC Releases Report on Patent Assertion Entities

Three years ago, the Federal Trade Commission announced a study of “patent assertion entities” (“PAEs”): “businesses that acquire patents from third parties and seek to generate revenue by asserting them against alleged infringers.”  The FTC’s purpose was to gather information about PAEs in order to make informed policy decisions regarding “the role of PAEs in promoting innovation and economic growth.” Yesterday, the FTC released its report, Patent Assertion Entity Activity: An FTC Study, which considers—in 269 pages—the practices of 22 PAEs and 327 affiliated entities from January 2009 through mid-September 2014.  This post addresses three findings in the report. Portfolio   Read More »

Posted in Patent Litigation | Tagged , ,

Share this Article:

Ninth Circuit Could Reconsider Attorneys’ Fees Standard for Federal Trademark Litigation

In Octane Fitness v. ICON Health & Fitness (2014), the Supreme Court changed the standard for recovering attorneys’ fees in patent litigation.  Rejecting a “rigid and mechanical formulation,” the Court adopted a looser “totality of the circumstances” test.  Earlier this year, a Ninth Circuit panel held that the Octane Fitness standard did not apply in trademark cases.  But now the Ninth Circuit has ordered an en banc rehearing of the panel’s decision. In SunEarth, Inc. v. Sun Earth Solar Power Co., the district court permanently enjoined Sun Earth Solar Power from using “Sun Earth” in the U.S. because that use   Read More »

Posted in Patent Litigation, Trademark Litigation | Tagged , ,

Share this Article: