IP Newsflash

Under the Lanham Act, a plaintiff who prevails on a trademark infringement claim may be entitled to recover the “defendant’s profits” as damages. The Supreme Court in Dewberry Group, Inc. v. Dewberry Engineers Inc. unanimously construed “defendant’s profits” in 35 USC § 1117(a) to mean that only the named defendant’s profits can be awarded, not the profits of other related corporate entities. The Court, however, left open the possibility that other language in § 1117(a) may allow for damages linked to the profits of related entities, if properly raised and supported.

A District of Delaware judge recently granted a defendant’s motion to include a patent prosecution bar in its proposed protective order after determining that litigation counsel’s ability to practice before the Patent Office—without ever having represented the plaintiffs at the Patent Office in the past—weighed heavily in favor of the bar.

The District of Delaware recently rejected a patentee’s argument that non-production of an opinion letter from counsel, combined with knowledge of the patent, warranted a finding that defendant induced infringement.

The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and thus the same “inventive entity,” as the challenged claims.

A district court recently refused to exclude testimony regarding consumer surveys conducted by a design patent expert, holding instead that the consumer surveys may be probative of how an ordinary observer would view the designs at issue, and thus could assist the factfinder in determining design patent infringement under the ordinary observer test.

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine on infringement, among other issues. This new bright-line test and the underlying rationale, however, raised several new questions regarding expert admissibility. See “Federal Circuit: Narrow Definition of Skill in the Art Dooms Expert’s Testimony” and “Grappling With A Bright-Line Patent Expert Admissibility Test.” The Federal Circuit recently addressed one of those questions, namely whether an expert must have acquired the requisite level of skill as of the time of the invention or whether it is sufficient for an expert to acquire that knowledge at a later date.

In advance of a new trial to determine damages for patent infringement, a district court denied plaintiff’s motion to preclude defendants from introducing the terms of plaintiff’s settlement offers. The district court concluded that the licensing offers had probative value to show industry practice for negotiating licenses on fair, reasonable, and non-discriminatory (FRAND) terms.

In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues of first impression relating to sanctionable misconduct in inter partes review proceedings. As set forth in more detail below, the Director ultimately determined that the petitioner had engaged in abuse of process. The Director banned the petitioner from any further participation in the proceeding, and allowed a joined petitioner to step into the role of lead petitioner. The Director then instructed the Patent Trial and Appeal Board to determine whether the IPR petition met the compelling-merits standard for institution, which is a higher standard than the reasonable likelihood standard typically required for IPR institution.

A panel of the Federal Circuit reversed its prior decision and the decision of the District Court of Delaware when it found claims containing a negative limitation invalid for lack of written description. Because the specification did not expressly or inherently disclose that the claimed method of treatment excluded a loading step, it lacked sufficient support for such a negative limitation in the claims.