Intellectual Property Litigation

The Supreme Court of the United States issued a pair of significant decisions today regarding post-grant practice before the PTO’s Patent Trial and Appeal Board.

Different Bases, Same Result in District of Minnesota Transfer Cases

March 19, 2018

By Katherine J. Rahlin

The District of Minnesota continues to see many cases transferred to other districts after last year’s Supreme Court decision on venue in patent cases in TC Heartland v. Kraft Foods.

District of Minnesota Rejects Alice Challenge to Check Processing Patent Claims

December 18, 2017

The District of Minnesota recently issued its fourth post-Alice decision, this time addressing the question of patent subject matter eligibility for a check processing patent.

Pleading Willfulness in the District of Minnesota Post-Halo

December 8, 2017

By Barbara Marchevsky

Over a year after the Supreme Court’s decision in Halo Electronics, district courts continue to disagree over what is required to adequately plead a claim for willful infringement. The District of Minnesota is beginning to enter the fray.

On the Move: Judge Nelson Ships a Patent Case to Pennsylvania Under TC Heartland

September 1, 2017

In May 2017, the United States Supreme Court decided TC Heartland LLC v. Kraft Foods and limited venue in patent cases to where a corporate defendant is incorporated or has a regular and established place of business.

Supreme Court Dramatically Restricts Venue in Patent Cases

May 22, 2017

The U.S. Supreme Court’s May 22, 2017, decision in TC Heartland LLC v. Kraft Foods Group redefined the possible venues for patent infringement lawsuits.

Federal Circuit’s Helsinn Decision Limits America Invents Act Changes to “On Sale” Prior Art

May 12, 2017

In Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA, Inc., the U.S. Court of Appeals for the Federal Circuit addressed the degree to which the Leahy-Smith America Invents Act of 2011 (AIA) altered the “on sale” prior art provision of 35 U.S.C. § 102.

When it Comes to Asserting the Defense of Laches, Patent Infringers are Out of Time

May 8, 2017

By Katherine J. Rahlin

In SCA Hygiene Products v. First Quality Baby Products, the Supreme Court recently ended over a 100 years of application of the equitable doctrine of laches in patent infringement cases.

Using Email Service to Fight Counterfeiters

May 8, 2017

Malicious counterfeiters often hide their identities, making it impossible to serve them through traditional means.

Relying On Assumptions in Your Complaint May Subject You to An Exceptional Case Finding and Award Of Attorneys’ Fees

May 8, 2017

In M-I Drilling Fluids UK Ltd. v. Dynamic Air Inc., Chief Judge Tunheim recently adopted the Report and Recommendation of Magistrate Judge Bowbeer, finding the case to be exceptional and awarding attorneys’ fees against Plaintiff M-I.

Do Not Waive Privilege After Declining to Assert the Advice of Counsel Defense

January 25, 2017

By Timothy M. O'Shea and Ted C. Koshiol

Parties facing allegations of willful patent infringement can rebut the claim by proving that they relied in good faith upon the advice of counsel when undertaking the allegedly infringing activity. However, asserting the advice of counsel defense carries a heavy cost - waiver of privilege as to at least the attorney work product and attorney-client communications relied upon in formulating the opinion. Some courts have even extended the scope of this waiver more broadly to cover any information even considered by the advising counsel. This tradeoff leads many to forego raising the advice of counsel defense.

Civil Procedure Quiz: What Rule Applies to Motions to Amend Pleadings?

January 18, 2017

If you read past the title, you are a civil procedure nerd. The answer for you is as easy as two plus two. Rule 15! You can recite the standard in your sleep: “freely given when justice so requires.”

Phigenix Decision Limits Appeals from America Invents Act Trials

January 12, 2017

On January 9, 2017, the U.S. Court of Appeals for the Federal Circuit issued its decision in Phigenix, Inc. v. ImmunoGen, Inc. (Case No. 2016-1544), severely limiting the appellate rights of petitioners in America Invents Act proceedings that do not engage in potentially infringing activities.

To Avoid Waiver, Attorney Advice Should Only Be Disclosed to Those with a Need-To-Know

January 9, 2017

In Solutran, Inc. v. Elavon, Inc. and U.S. Bancorp, Magistrate Judge Thorson recently granted the defendants’ motion to compel the production of three slides in a PowerPoint presentation that plaintiff claimed were protected by attorney-client privilege or the work product doctrine. Plaintiff initially produced the entire presentation, which included a section discussing patent litigation. The slides in that section were drafted by plaintiff’s attorneys and included the law firm’s logo. When the presentation was used in a deposition, plaintiff immediately clawed it back and subsequently produced a new version with the three slides at issue redacted.

The District Court Knocks Down a Counterfeiter—Hydreon Corp. v. JC Brothers, Inc.

December 23, 2016

Hydreon Corporation sells a product called FakeTV^®, which deters burglars by emitting and projecting light patterns to simulate real television broadcasts. The light patterns make it appear that someone is home watching television when the house is actually empty. In recent years, counterfeit versions of the FakeTV^® device have sprung up on Amazon.com and eBay.com. This has become an all-too-common occurrence for U.S. companies.

District of Minnesota Adopts Local Rule 5.6, - Instituting New Processes and Requirements for Civil Parties Filing Under Seal

December 21, 2016

By Anne Rondoni Tavernier

With the adoption of new Local Rule 5.6, the District of Minnesota will be changing the game for filing documents under seal in civil cases.

Is Amazon Liable for Counterfeits?

December 9, 2016

The maker of the popular Snuggie blanket, Allstar Marketing Group, LLC, sued Amazon for trademark infringement earlier this week, alleging that the online retailer enabled the importation and sale of counterfeit Snuggie blankets.

District Judge Susan Richard Nelson Provides Useful Guidance on 1404(a) Transfer Requests

November 22, 2016

Contact: Intellectual Property Litigation Group

Under 28 U.S.C. § 1404(a), “[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” When a party moves to transfer venue under § 1404(a), courts consider: (1) “the convenience of the parties,” (2) “the convenience of the witnesses,” (3) “the interests of justice,” and (4) “any other relevant factors when comparing alternative venues.” A recent opinion from Judge Nelson in the The Valspar Corporation and Valspar Sourcing, Inc. v. PPG Industries, Inc. case provides useful guidance for parties considering such a motion, especially concerning the convenience-of-the-parties prong of the analysis.

Federal Circuit Adds Arrow to Quiver for Defending Against an Alice Challenge

October 19, 2016

The Federal Circuit’s recent patent eligibility opinion in McRO Inc. v. Bandai Namco Games America, 2016 WL 4896481 (Fed. Cir. Sept. 13, 2016) is the latest to find claims involving computer technology that survive a § 101 challenge.

Your First Shot to Invalidate a Patent May be Your Last—District of Minnesota Holds Issue Preclusion Bars Party from Presenting ANY Invalidity Arguments

August 30, 2016

The District of Minnesota recently held that the doctrine of issue preclusion bars a party from making any invalidity arguments or re-construing claims of a patent it has previously litigated.

No “Reasonable Certainty” for Icon Health & Fitness at Federal Circuit

August 25, 2016

By Katherine J. Rahlin

The Federal Circuit has had few opportunities to address the new standard for proving indefiniteness since the Supreme Court relaxed the standard from “insoluble ambiguity” to “reasonable certainty” more than two years ago in Nautilus v. Biosig. Recently, however, the Federal Circuit applied Nautilus in affirming decisions in parallel cases, Icon Health & Fitness, Inc. v. Polar Electro Oy and Icon Health & Fitness, Inc. v. Garmin International, Inc., finding Icon’s asserted patent invalid as indefinite.

The Supreme Court Turns Back the Clock on Willful Infringement with Halo Electronics

July 7, 2016

What is old is new again when it comes to willful infringement.

Six Fredrikson & Byron Attorneys Recognized in Intellectual Asset Management’s 2016 Patent 1000 Guide

June 1, 2016

Debuting in the 2016 edition of the IAM Patent 1000: The World’s Leading Patent Professionals were Lora Friedemann and Ann M. Ladd. Also ranked again were Thomas R. Hipkins, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West. The IAM Patent 1000 identifies the top patent professionals in key jurisdictions around the world.

President Obama Signs National Trade Secret Law

May 11, 2016

On May 11, 2016, President Obama signed the Defend Trade Secrets Act (DTSA) into law, creating a new federal cause of action for trade secret misappropriation. Previously, all trade secret claims had to be brought under state law (either under a state’s Uniform Trade Secrets Act or under common law). The new federal trade secret law has some notable features that will make it a useful tool for protecting innovation, especially for those industries where patent protection may be hard to obtain under the Supreme Court’s recent Mayo and Alice decisions.

Recent Order from Magistrate Judge Franklin L. Noel Provides Important Lessons on Expert Disclosures

March 15, 2016

Contact: Intellectual Property Litigation

A recent order by Magistrate Judge Noel in Luminara Worldwide, LLC v. Liown Electronics Co. helps to clarify the Federal Rules on expert disclosures.

Magistrate Judge Hildy Bowbeer Offers Further Guidance on When a Court Should Order a Patentee to Reduce the Number of Asserted Claims

March 1, 2016

By Timothy M. O'Shea

A Patent holder bringing an infringement suit sometimes brings suit to enforce hundreds of patent claims and may have little motivation to drop asserted claims until late in the litigation, leaving a defendant and the Court with numerous claims in the pre-trial phase. A recent case before Magistrate Judge Bowbeer offered further guidance on how and when courts should reduce the number of asserted claims.

Think Twice Before Sharing Privileged Documents with a Potential Patent Licensee

January 22, 2016

It is not uncommon for a party seeking to license or acquire a patent to request information from the patent holder regarding the patent’s validity and strength. Often, this includes highly confidential documents between the patent holder and attorneys, which are generally privileged and protected from disclosure. However, disclosing privileged documents to a third party usually constitutes a waiver of the privilege. In limited circumstances, the “common interest doctrine” allows two or more entities with a joint interest to share privileged information without waiving its protection. This can include, for example, communications between separate parties negotiating a patent license. Before disclosing any privileged communications to a potential licensee, though, a patent holder should carefully consider whether they may be discoverable in subsequent litigation by a party seeking to invalidate the patent.

Patent Plaintiffs Beware!

December 2, 2015

Pleading patent infringement got a little bit trickier on December 1, 2015.

Willful Patent Infringement May Soon Be Provable Once Again

November 4, 2015

On October 19, the Supreme Court granted certiorari in two cases in which patent owners are challenging the Federal Circuit’s rigid standard for proving willful infringement. In their petitions, both patent owners compared the current test for enhanced damages to the Federal Circuit’s old test for attorney’s fees, which the Supreme Court tossed out last year in Octane Fitness LLC v. ICON Health & Fitness, Inc.

Practical Reminder for Ensuring Privileged Documents Stay Privileged

October 13, 2015

For all the protection the attorney-client privilege offers, it presents a bevy of potential pitfalls that may lead to the ultimate disclosure of the privileged documents.

Accused Infringer Prevails on Laches Defense

October 6, 2015

If you sit on your rights as a patent owner, you may lose your claims against infringers. Patent owner Dane Technologies recently learned that lesson the hard way.

Magistrate Judge Rau Offers Primer on “Prevailing Party” Status Under the Patent Act’s Attorney Fees Provision

September 28, 2015

By Timothy M. O'Shea

Patent law permits the award of legal fees to a “prevailing party” only in “exceptional cases.” A recent decision from Magistrate Judge Rau applying the Patent Act’s attorney fees provision reminds litigants that demonstrating a case is “exceptional” in only one part of the equation.

District Court in Octane Fitness Remand Awards Majority of Requested Attorneys’ Fees Under Section 285

September 11, 2015

By Kurt J. Niederluecke & Adam R. Steinert

In a lawsuit that redefined the standard for an exceptional case under 35 U.S.C. § 285, the District Court awarded defendant Octane Fitness $1,778,030 in fees and costs. The District Court initially denied Octane Fitness’ motion for fees. But after the Supreme Court redefined the standard on appeal, reversed and remanded the case (Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014)), the District Court found the case exceptional under the new standard.

Want to Preliminarily Enjoin the Sale of an Infringing Device? Be Prepared to Show the Value of Your Patent

September 3, 2015

Recently, the District Court of Minnesota denied a patent holder’s motion to preliminarily enjoin the sale of an infringing device because the patentee failed to show a sufficient nexus between the allegedly infringing technology and lost sales.

Patent Infringement Case Stayed Pending IPR on Some (But Not All) Asserted Claims

August 17, 2015

Should a patent infringement lawsuit be stayed where an IPR challenges some, but not all, of the asserted claims? Magistrate Judge Hildy Bowbeer grappled with that issue in Oticon A/S v. GN Resound A/S, Case No. 15-cv-2066. Oticon, the patent holder, accused GN Resound of infringing 22 claims in a single patent. GN Resound petitioned for inter partes review. The PTAB instituted review on eighteen claims, but declined to institute review on the remaining four claims.

District of Minnesota Orders Patentee to Reduce Number of Asserted Claims After Filing Joint Claim Construction Statement

August 17, 2015

In May, the District of Minnesota ordered the parties in a patent case to meet and confer to try to reach an agreement regarding the deadline by which the patentee must reduce the number of asserted claims.

Fees Will Be Awarded In Exceptional Patent Case

July 29, 2015

Octane Fitness, the winner in a six year patent infringement lawsuit, will receive an award of attorney’s fees. In 2014, the case resulted in a change in the legal standard that applies when a prevailing party seeks a finding that a patent case is “exceptional,” allowing the party to seek an award of attorney’s fees.

Kimble v. Marvel Entertainment - The Supreme Court Tells Patent Licensors to Get Creative

July 21, 2015

In 1964, the Supreme Court decided Brulotte v. Thys and held that a patent owner cannot charge royalties for the use of a patented invention after the patent’s term has expired. While the Brulotte rule is simple, it has faced plenty of criticism over the years. Lower courts and academics alike have challenged the economic logic underlying the rule and criticized the decision as counterintuitive.

Invalidity Opinions of Counsel After Commil

June 30, 2015

By Thomas R. Hipkins

Despite the Supreme Court’s recent Commil USA, LLC v. Cisco Systems, Inc. decision, invalidity opinions of counsel remain an important tool for mitigating patent infringement risk. Under Commil, invalidity opinions cannot be used to show that an accused infringer lacked the requisite intent to induce—i.e., the scienter element—under 35 USC § 271(b). But companies will continue to use the opinions to memorialize early-stage validity analyses as part of a broader strategy of assessing potential patent infringement risk.

Patent Troll Bill Resurfaces in the Congress

June 16, 2015

By Natalie D. Kadievitch

Last year Congress tried to pass a bill aimed at curbing abusive patent litigation initiated by so-called “patent trolls,” or non-practicing entities (NPEs), but the bill died in the Senate when it was dropped from the Senate’s agenda as it was nearing a vote, even though the bill had passed in the House and President Obama had indicated he would sign it. This year, the push for legislation has been revived and bills have been introduced in both the House of Representative and the Senate.

Limelight Decision Opens the Door to Challenge Federal Circuit’s Standard for Direct Infringement of a Method Claim

June 30, 2014