Virtual Patent Marking

By Jeffrey C. Norris, Partner, Standley Law Group LLP

Patent owners are required to provide notice to an infringer under 35 U.S.C. § 287 in order to be able to collect damages for infringement. Failure to provide proper notice of the patent rights can prevent the recovery of damages, which could be costly. Damages are only available to compensate for infringement that occurs after effective notice has been given to the infringer.

Effective notice to an infringer may be either actual or constructive. Actual notice consists of directly contacting the infringer to provide notice of the infringement. While actual notice is effective, there is necessarily a period of infringement prior to the notice for which damages may not be recovered. Constructive notice may eliminate that lag time by automatically providing notice to the public that an article is patented. According to case law, the constructive notice must be “substantially consistent and continuous” in order to ensure that the public is adequately informed of the patent rights. When there is effective constructive notice prior to the infringement, damages will be available once the infringement takes place.

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Exhausted yet? If not, you may be soon

By Melissa A. McCurdy, Senior Associate, Standley Law Group LLP

Supreme Court Set to Decide Important Questions on the Scope of Patent Exhaustion in 2017

Impression Products, Inc. v. Lexmark International, Inc., is set for oral argument before the United States Supreme Court on March 21, 2017. The outcome of the case, which will address the scope of patent exhaustion, could have a serious impact on certain segments of business such as companies, like Impression Products, that refurbish used, patented products for resale (think phones, laptops, toner cartridges, etc.). It could also have an effect on the rights of consumers that purchase patented goods. The two specific questions pertaining to the doctrine of patent exhaustion that are going to be analyzed by the Court are: 1) whether a conditional sale that transfers title to a patented item, but which specifies post-sale restrictions on the item’s use or resale avoids application of the patent-exhaustion doctrine and therefore permits the enforcement of the post-sale restrictions; and 2) whether patent exhaustion will be triggered by a sale of the patented item (the sale being authorized by the patentee) when the sale occurs outside of the United States. The Federal Circuit has upheld post-sale restrictions on patented articles despite the doctrine of patent exhaustion and it has rejected the contention that patent exhaustion can be triggered by a foreign sale. We are about to find out whether the Supreme Court agrees with these applications of law.

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Are You Maximizing Damages for Your Client?

By Adam J. Smith, Assoc. Atty, Standley Law Group LLP

Understanding Pre-Issuance Damages Under 35 U.S.C. §154(d) in View of Rosebud LMS Inc. v. Adobe Systems, Inc.

The Federal Circuit recently ruled on the relatively little-used provision of pre-issuance damages under 35 U.S.C. §154(d). This rarely asserted and rarely granted "extraordinary remedy" gives patent applicants the right to collect a reasonably royalty based on infringement that occurred following the publication of a patent application where the accused infringer is provided "actual notice" of the published patent application, and the asserted claims remain "substantially identical" between publication and issuance.1

35 U.S.C. §154(d) was passed as part of the Domestic Publication of Foreign Filed Patent Applications Act of 1999. As it generally takes several years for claims to accrue under a new law and several more years for those claims to progress through the court system, the Federal Circuit has had few opportunities to opine on §154(d) until recently.

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Batmobile - You're a Character!

By Stephen L. Grant, Sr. Atty, Standley Law Group LLP

"In our well-ordered society, protection of private property is essential." This is how a panel of the Ninth Circuit started its conclusion in DC Comics v. Mark Towle (Case 13-55484, September 23, 2015), quoting a statement by Batman to his trusty sidekick Robin in an episode of the Batman television show. We certainly strive to keep our society "well-ordered." As a result, Mark Towle’s replica Batmobiles, sold at about $90,000 each, are infringements of DC Comics’ copyright in the Batman comic books.

Does it make sense to consider the Batmobile a "character"? I think that the Court’s decision in affirming a summary judgement at the district court is well-reasoned and correct. In deciding the case, however, the Court reveals once again that copyright law, while appearing quite rudimentary and logical, can occasionally exhibit some unexpected depth.

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Ohio lawmakers take a stab at patent reform

By Beverly A. Marsh, Partner, Standley Law Group LLP

In an effort to address patent reform at the state level, the 130th General Assembly of the State of Ohio has introduced House Bill No. 573. 1 The asserted purpose of Bill 573 is to: 1) prohibit "bad faith" assertions of patent infringement, 2) allow tort actions to be brought against those making bad faith assertions of patent infringement in the Ohio Courts of Common Pleas, and 3) allow the Attorney General to investigate and bring suit against those it believes are making bad faith assertions of patent infringement. Patent holders who are unsuccessful in defending against such a suit may be required to pay the other side’s costs and attorney’s fees, compensatory damages, and possible trebling of costs, fees, and damages. This bill has no doubt been introduced to lessen the harsh impact that a growing number of patent infringement suits have caused Ohio businesses.

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