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Monthly Archives: June 2013

Federal Circuit Eviscerates Past Damages for Induced Infringement

Commil USA v. Cisco Systems, Case No. 12-1042 (Fed. Cir. June 25, 2013)

The Federal Circuit effected a major change in the law of vicarious liability for patent infringement.  In particular, the Federal Circuit has established a defense to induced infringement based on a good-faith belief by the infringer that the patents were invalid.  This will likely make obtaining an opinion of counsel on invalidity even more important for those facing patent infringement suits – a well drafted opinion of counsel finding that asserted patents were invalid will greatly reduce the possibility of damages up to a determination of validity at trial, or at a minimum, a denial of summary judgment on invalidity.

Federal Circuit – No Dismissal for Lack of Patentable Subject Matter

Ultramercial v. Hulu, Case No. 2010-1544 (Fed. Cir. June 21, 2013)

The district court had dismissed Ultramercial’s claims for failing to comply with the requirements of 35 U.S.C. Sec. 101.  The Federal Circuit reversed, and stated that “it will be rare that a patent infringement suit can be dismissed at the pleading stage for lack of patentable subject matter.”  This is because the patent already carries the USPTO’s stamp of approval, and must be invalidated only on a showing of clear and convincing evidence.  In addition, the Court pointed out that a determination under 35 U.S.C. Sec. 101 is “rife with underlying factual issues”  and that “claim construction normally will be required.”

Verdict of Inequitable Conduct Overturned

Novo Nordisk v. Caraco Pharmaceutical Laboratories, Case No. 11-1223 (Fed. Cir. June 18, 2013)

The Federal Circuit overturned the district court’s determination of inequitable conduct as the asserted omissions and representations submitted in a pair of declarations did not meet the heightened standards of materiality established by recent Federal Circuit opinions.

The Federal Circuit affirmed the district court’s determination that one of the asserted claims was obvious.

Fallout from the E.D. PA Bellwether Trial

By Konrad Sherinian

On June 13, 2013, a Bellwether trial occurred before Judge Baylson in the Eastern District of Pennsylvania.  Malibu tried three Does before the bench.  By normal standards, it was not much of a trial.  All three Does had admitted liability, and two had already settled.  The third, Doe No. 16, had agreed to a high-low agreement prior to the trial.  Accordingly, there was not a lot at stake.  The fact that every defendant waived their right to a jury trial drove this home – if there was anything at stake, no competent attorney would waive his/her client’s right to cross-examine a pornographer in front of a jury.  In fact, during the trial, reference was made to an agreement that apparently prohibited counsel for the defendants from speaking.  Rather, giving credit where credit is due, Attorney Lipscomb orchestrated this case as a bit of theater, or more specifically, an advertisement, to make his client’s case in the court of public opinion.  And again, giving credit where credit is due, this was a victory for Malibu Media.

Taking this for what it was – theater orchestrated by Attorney Lipscomb – there are still some interesting facts that can be learned:

1) Malibu is dead serious about BitTorrent cases:  To put on a trial – even an orchestrated trial – cost Malibu $200K+ in legal fees.  And yes…$200K+ is a very conservative estimate.  There is no way that the stipulations, motions in limine, witness preparation, preliminary motions, etc. could have been done for less.  I note that Attorney Lipscomb stated on the record that he was compensated for his time; i.e., there was no contingent fee deal at least for this trial.  If Malibu is willing to spend that kind of money, they are willing to vigorously pursue a case.

2) Malibu does send DMCA takedown notices:  Colette Fields, who runs Malibu Media, testified that Malibu / X-Art sends thousands of take downs every month, but that torrent sites ignore them.  Regretfully, personal experience tells me that this is probably true – most of the torrent sites are based out of “Justice Free” zones, and simply ignore takedown notices.

3) Malibu did not present strong evidence on the correlation of IP address to individuals:  Their evidence comprised a stipulation with the various Does as well as testimony by a police officer that had gone after criminals that distributed child pornography.  He testified that in over 200 cases, he never once encountered a case of wireless router hacking.  The problem with this testimony is, while it sounds great, it is likely not admissible as his experience with other cases is irrelevant to the particular case at bar.  Of course, a Defendant crying “wireless router hacking” will not get him anywhere either unless he produces evidence that his router was actually hacked.

4) Malibu plays by the rules and is not going to implode.  A lot of Internet pundits are waiting for Malibu to self-destruct the same way that Prenda did.  It is not going to happen – Malibu is an entirely different organization that employs competent counsel and takes a very professional approach to these cases.  They are not going to commit the kind of fraud that so enraged Judge Wright, Judge Shadur, and lots of other Judges.  But…

5) Malibu made a lot of mistakes.  Even in the heavily scripted, not-trial-but-theater of June 13, Malibu made a lot of mistakes.  Most glaring is, without the admissions of liability, I do not believe that Malibu would have made its case; i.e., without the admissions of liability, I believe that a competent attorney could have moved for directed verdict after the close of Malibu’s case with a reasonable probability that it would have been granted.  In addition, Colette Fields made some extraordinary statements – none of which were necessary for Malibu’s case – that are undoubtedly going to be used against her if she is ever deposed or cross-examined in a real trial.  Finally, Malibu likely waived any restrictions against mentioning Malibu’s business practices in future trials given statements made during its opening and closing.

The author is the managing partner of the Law Offices of Konrad Sherinian, LLC, a boutique intellectual property and commercial litigation law firm in the Western suburbs of Chicago.  The Law Offices of Konrad Sherinian, LLC is one of the leading mass copyright defense firms in the United States, and Mr. Sherinian has personally defended numerous Doe defendants from accusations of copyright infringement due to their alleged participation in file sharing.  

The Law Offices of Konrad Sherinan, LLC

Isolated Genes – Not Patentable / Synthetic Genes – Patentable

Association for Molecular Pathology v. Myriad

We will post more about this in the next few days, but, in summary, the Supreme Court determined that isolated genes do not comprise patentable subject matter under 35 U.S.C. 101 while synthesized genes (so called cDNA) was deemed patentable.

Motion to Sever Granted / Motion to Quash Denied

Malibu Media v. John Does 1-21, Case No. 12-CV-9656, Slip Op. (N.D. Ill. June 6, 2013)(Reinhard)

In this Malibu case filed in December of 2012, a number of Does had moved to sever and quash the subpoena served on their ISPs.  The Court followed the dominant trend and determined that joinder was improper as the conduct of the various Does did not comprise the same transaction or series of transactions.  Accordingly, this case will be severed, and Malibu will need to determine who it will file separate lawsuits against.  If Malibu is true to form, it will file a separate lawsuit against each Doe that filed a motion to quash.

Interestingly, the Court did not quash the subpoenas issued to the various ISPs, even though the motion to sever was granted.  Instead, the subpoenas will proceed while Malibu determines who it will file individual cases against – Malibu is likely to use this information to ensure that it pursues those Does with the means to pay.

Finally, the Court determined that the various Does could proceed anonymously through at least part of the litigation.  This eliminates any threat of Malibu threatening to publicly name a defendant in a case as a settlement tactic.

If you are identified by your ISP as the Doe in a file sharing lawsuit, you may want to review this article, which contains some helpful tips on how to deal with these kinds of suits:

http://ezinearticles.com/?The-5-Steps-You-Need-to-Take-When-You-Receive-an-ISP-Subpoena-Letter&id=7696216

Atty Ad:  The Law Offices of Konrad Sherinian, LLC has successfully defended numerous file sharing cases alleging the use of Bit Torrent to copy movies, music, software and other content other the Internet.  Call (630) 318-2606 today for a free consultation if you have received a subpoena letter from your ISP.

Doe Files Motion to Quash in Her Own Name / Elf-Man Dismisses and Sues Her in Separate Suit

Following the new standard tactic of mass copyright plaintiffs, Elf-Man dismissed the latest Doe to file a motion to quash in case no. 13-CV-2362 without prejudice and sued her in a separate suit.  Unlike other Does, Doe No. 29 filed the motion in her own name, and listed her address and Comcast file number.  She alleges that her router was not protected, and therefore, she did not participate in file-sharing as alleged by Elf-Man.  Strategically, this has not helped Doe No. 29 at all – Elf-Man dismissed her without prejudice as it did with Doe No. 43 thereby mooting her motion.  Elf-Man is also likely to raise its demand to Doe No. 29 by 200% or more and aggressively litigate its case against her, elevating what was likely a nuisance suit into a potentially life altering event.

If you are identified by your ISP as the Doe in a file sharing lawsuit, you may want to review this article, which contains some helpful tips on how to deal with these kinds of suits:

http://ezinearticles.com/?The-5-Steps-You-Need-to-Take-When-You-Receive-an-ISP-Subpoena-Letter&id=7696216

Atty Ad:  The Law Offices of Konrad Sherinian, LLC has successfully defended numerous file sharing cases alleging the use of Bit Torrent to copy movies, music, software and other content other the Internet.  Call (630) 318-2606 today for a free consultation if you have received a subpoena letter from your ISP.