Patents

Patent Infringement: What to Do and How to Respond If You’ve Been Accused

Feb 22, 2021 | By Ted Polasek | Read Time: 3 minutes

There were a total of approximately 3.1 million unexpired patents in the United States in 2020. With so many patents covering inventions of all kinds, well-meaning companies may find that they have accidentally and allegedly infringed upon someone’s patent rights. As with other types of intellectual property, patent infringement is serious business. You may have wondered what to do if accused of patent infringement. What Is Patent Infringement? A patent gives its owners certain exclusionary rights. Title 35 of the United States Code, Section 271(a) provides that patent infringement occurs when someone makes, uses, sells, offers to sell a patented invention within the United States, or imports a patented invention into the United States. Whether the accused person knows about the patent is irrelevant to a finding of infringement; however, it may affect the amount of damages awarded. If the infringement is willful the court may enhance the monetary award up to triple the damages awarded. Additionally, Section 271 provides other bases for infringement that may be applicable to your particular situation. Your patent attorney will be able to evaluate infringement claims being made under Section 271. What to Do If Accused of Patent Infringement The  first notice that you may be infringing someone’s patent may be a cease-and-desist letter from the patent owner’s attorney. This letter will likely identify the patent(s) you are allegedly infringing and the basis for the infringement charge.  If you receive one of these letters, take it seriously. Consult a patent attorney without delay. However, a patent owner is not required to send a cease and desist letter, so your first notice that you are being accused of patent infringement may be service of the Complaint, which is the paper filed in Federal Court that initiates a lawsuit.  Again, your first step should be to consult a patent attorney that is knowledgeable in patent infringement litigation. In either event, below are additional steps to undertake: Hire a Patent Attorney Even if you have an in-house attorney or engineering or scientific staff, it is unlikely they will be familiar with the nuances of patent law. A patent attorney will be, and they can assess the situation and give guidance on how to proceed.  Gather Information Your attorney will likely ask you to start collecting information about the allegedly infringing product, and the patents listed in the demand letter or complaint. All this information is crucial to analyzing the strength of the infringement claim. Review the Patent Claims with Your Attorney Every patent contains claims that set forth the invention. Each claim is made up of several limitations that describe “the invention.”  These claims are the “metes and bounds” of the patent owner’s exclusionary rights. In consultation with your attorney, review the claims in the patents. In general, infringement occurs only if your product or process meets all limitations of a particular independent patent claim.  Your patent lawyer will guide you through the process of construing the claims and applying the claims to your accused product or process.  A patent attorney’s expertise is crucial during this step. Develop a Plan to Handle the Case Once you have reviewed the situation, it’s time to come up with a plan to defend yourself. Your patent attorney will help you build a defensive strategy. Hire a Patent Infringement Attorney If your company is accused of patent infringement, The Polasek Law Firm can help you develop a plan to defend your company. Our mission is to provide efficient, economically viable solutions to the issues facing our clients. We offer our years of patent litigation experience at affordable hourly rates and flexible fee arrangements to meet your needs. Contact The Polasek Law Firm today through our form or give us a call at 832-485-3580 to schedule a free consultation.

Continue Reading
Trademark

Tips for Hiring an Affordable Trademark Attorney

Feb 22, 2021 | By Ted Polasek | Read Time: 3 minutes

Your brand name or logo is an important part of your business. Whether you sell goods or provide services, your brand is how customers identify you. Registering a trademark allows you to protect the association your customers have with the goods and services of your business. However, if you’ve spent any time researching how to file a trademark, you’ve probably seen that just the filing fee is going to cost a few hundred dollars.  Some attorneys will charge a flat fee for filing an application; others will bill by the hour. Fortunately, finding an affordable trademark attorney is easy if you know what to look for. What Is a Trademark? A trademark is any word, name, logo, slogan, or symbol used to identify the goods or services of the seller. Because trademarks are identified with an individual’s or business’s goods or services, it is important that individuals and businesses in the same or similar spaces do not use trademarks that are likely to confuse consumers. Tip #1: Figure Out How Much Help You Need There are many steps to registering a trademark, whether it is with the U.S. Patent and Trademark Office (USPTO) or with a state, such as the Texas Secretary of State. Knowing how much help you will need from an attorney is something to keep in mind when searching for an affordable trademark attorney. If you decide to consult an attorney, have the information ready.  Your attorney will want to know what the mark is, who is using the mark, the date the mark was first used (if it is being used) and the date it was first used in commerce.  If you are using the mark, your attorney will want a specimen of use of the mark.  If you can readily provide this information to your attorney, it will streamline the preparation of the application. A trademark attorney will generally charge a separate fee for each step, depending on its complexity. The general process includes: Conducting a search for other marks that may be confusingly similar; Determining whether your mark is confusingly similar to an existing registration or pending application; Preparing and filing the trademark application; Responding to office actions, if necessary; and After registration, monitoring the trademark and filing renewal statements. How Much Does a Trademark Registration Cost? The cost of registering a trademark has two main parts: USPTO fees and attorney fees. At a minimum, filing a trademark application with the United States Patent and Trademark Office for one class of goods or services (i.e. one type of goods) costs approximately $350. When it comes to attorney fees, the exact cost will vary depending on the facts particular to your situation. Preparing and filing the application likely will cost several hundred dollars of attorney time.  After the application is filed, it will be examined by the USPTO. Depending on what, if any, issues are raised by the trademark examiner will have a large impact on additional attorney time.  Tip #2: Speak with Several Trademark Attorneys Many attorneys offer an initial free consultation. During this conversation, you have the opportunity to explain some basics of your situation and what legal services you need. Use this time to find out how much the attorney charges and what your specific needs will cost.  It will also give you an opportunity to evaluate whether you want to work with that person. Ask yourself, was this attorney willing to take the time to discuss your matter and explain the process?  Did the attorney return your inquiry/call timely? Tip #3: Consider the Attorney’s Experience How much experience they have can affect whether a trademark attorney is affordable. While more experienced attorneys are usually more expensive, this isn’t always the case. Experienced attorneys may be more efficient.  It’s important to speak with any attorneys you are interested in to make sure you don’t pass up an experienced attorney with affordable rates.   Hire an Affordable Trademark Attorney Before you search “affordable trademark attorney near me,” contact The Polasek Law Firm. If you’re looking for an attorney who won’t break the bank, look no further. Contact us today online or give us a call at 832-485-3580 for a free consultation.

Continue Reading
Patents

Patent Infringement Damages Overview

Feb 18, 2021 | By Ted Polasek | Read Time: 3 minutes

As an inventor, owning a patent is one of the most rewarding things you can achieve.  Successfully obtaining a patent on your invention requires significant dedication, time, and money. Unfortunately, however, individuals and entities do not always respect the protections provided by a patent. In fact, there were more than 225,000 patent cases filed in District Court in 2017 alone.  If another party steals your invention and uses it without your permission, they have committed patent infringement. When this happens, not only do they take advantage of your hard work, but they can also cause actual harm to you.  If someone infringes your patent, you may have a right to recover patent infringement damages. Of course, damages in patent infringement cases can vary widely from case to case depending on various factors. But if you have questions about your potential patent infringement damages and how you can maximize your claim, contact an experienced patent litigation attorney today.  The Polasek Law Firm focuses exclusively on the practice of intellectual property law. Give us a call today to discuss your case and see what patent infringement damages you may be able to recover.  Types of Damages in Patent Infringement Cases There are two primary types of damages in patent infringement cases: reasonable royalties and lost profits. A judge may award other types of damages in certain situations. However, reasonable royalties and lost profits are the most common. Reasonable Royalties A “reasonable royalty” is one type of patent infringement damages calculation. Essentially, a reasonable royalty is the fair market value associated with the use of your patent by the patent infringer. As you might expect, determining the fair market value of a particular invention might seem speculative and difficult to determine. Fortunately, there are a few different methods of calculating reasonable royalty damages in patent infringement cases.  An experienced patent infringement attorney can help you understand the various calculation methods and determine which one will allow you to maximize the amount of damages in your particular case. Lost Profits A “lost profits” claim for damages, on the other hand, does not rely on the market value of the use of your patent. Rather, lost profits are calculated by determining the amount of money that the patent owner would have made if not for the infringement.  Determining lost profits for purposes of a patent infringement damages calculation can also be complicated. This is often because the patent owner must be able to show a causal relationship between the infringed patent and the lost profits.  Damages in patent infringement cases can be difficult to prove. However, that doesn’t mean they are not worth pursuing. In fact, a court may even permit expert testimony to assist in determining a patent infringement damages calculation.  A knowledgeable patent litigation attorney can help you gather the evidence and information you need to help prove your patent infringement damages case. Contact a Patent Infringement Attorney Today Your patent carries important legal protections for your invention. When another party disrespects those protections, you have a right to take action.  At The Polasek Law Firm, we take your intellectual property seriously. With over 25 years of experience handling intellectual property litigation, we have the resources and experience necessary to protect and enforce your rights.  For more information on your potential patent infringement damages, contact us today and see what we can do for you. 

Continue Reading
Articles

What Is Contingency-Fee Patent Litigation?

Oct 21, 2020 | By Ted Polasek | Read Time: 5 minutes

Contingency-fee litigation serves to aid clients in pursuing patent litigation that they might otherwise not be able to afford. For many small businesses and companies, patent litigation is too expensive to pursue. Contingency-fee litigation is a cost-effective means for small businesses and companies to receive skilled counsel and defend their rights in intellectual property lawsuits. A contingency fee agreement for patent litigation means you do not have to pay your lawyer for his time unless your case settles, or you prevail in court. For corporate clients, this provides a company with the opportunity to use its money to grow its business and still have the ability to enforce its intellectual property.  For individuals with a claim that has strong merit but who lack the resources to litigate a patent infringement case, it provides an avenue for representation that may otherwise not be available.  This type of representation does not charge an hourly rate to clients. Instead, contingency-fee patent litigation attorneys receive a percentage of the final judgment awarded to their clients. The attorney-client agreement specifies what percentage of the final judgment the attorney receives as payment. Contingency-fee patent litigation attorneys receive payment only if they win the case for their client. Therefore, like the client, your contingency-fee patent litigation attorney has an incentive to win the case. This type of representation showcases an attorney’s ability to provide effective and efficient representation. A contingency-fee patent litigation attorney assesses the merits of your case by reviewing the following questions: Is there a valid cause of action?  Are there sufficient damages? Are the damages collectible from the defendant? How much attorney time and costs will it require to complete the lawsuit? After considering these factors, an attorney may take your case on a contingency-fee-basis only if the attorney believes in the likely success of the case. Benefits of a Contingency-Fee Patent Litigation Attorney  Contingency-fee patent litigation offers many benefits to clients. A qualified contingency-fee patent litigation attorney evaluates your cases goals and how best to achieve those results. Lower Out-of-Pocket Costs  Patent litigation lawsuits are costly and time-consuming. Most individuals and small businesses don’t have the cash flow to continue paying a firm the high costs associated with an intellectual property lawsuit. A contingency-fee patent litigation agreement does away with the worry of how to pay attorney fees up front. However, the client generally must pay for expenses related to litigation costs, such as filing fees and travel. If your contingency-fee patent litigation attorney fails to obtain a judgment or settlement, you pay nothing as a fee to the attorney.  An Incentive to Settle When Proper The nature of contingency-fee patent litigation representation incentivizes both client and attorney to act with joint interests. This incentive pushes both client and attorney to conclude the lawsuit in the most favorable manner possible. Therefore, when it makes sense to settle a case, both parties will be incentivized. Additionally, when it makes sense to pursue litigation through trial, both parties have the same goal. A contingency-fee patent litigation agreement spreads the risk of litigation to both client and attorney. Contingency-fee patent litigation pays an attorney only if their client wins their case. By contrast, the typical hourly agreement between client and attorney requires the client to assume all risks, regardless of the outcome.   A contingency-fee patent litigation attorney takes these types of cases based on the probability of success. An attorney should always diligently defend their client. However, in traditional hourly agreements, an attorney may not always believe in a case’s merits. If an attorney takes your case on contingency, they are staking their own time and resources on the case. Therefore, you can trust that your case has merit and that your attorney isn?t simply racking up fees on a lost cause. Time and Cost Control  Some law firms behave in a manner to maximize billable hours in a lawsuit. In contingency-fee patent litigation lawsuits, a firm has no incentive to bill unnecessary hours or costs to a client. This drives the firm to work more efficiently toward the resolution of your case. Your attorney will be incentivized to avoid expensive delays through excessive pleadings, depositions, or conferences. Areas of Intellectual Property Handled on a Contingency-Fee Basis Contingency-fee arrangements are possible in all intellectual property litigation. Consult with a contingency-fee patent litigation attorney to review the elements of your case and determine the suitability of a contingency fee agreement. Patents A patent affords the patent holder the right to exclude others from making, using, or selling an invention. Patent protection lasts twenty years. There are three different types of patents:? Design patents, which protect the ornamental design of an invention;  Utility patents, which protect the use or operation of a new machine, process or system; and  Plant patents, which protect new types of engineered plants. There are five criteria to meet to qualify for a patent. These include the following: The invention must cover patentable subject matter;  The invention must have utility; The invention must be novel; The invention must be non-obvious; and  There must be no disclosure of the invention before the patent application. Anyone who unlawfully makes, sells, or uses a product covered by a claim of an existing patent may be liable for infringement. If you believe someone has infringed your patent, a contingency-fee patent litigation attorney will review the validity of your patent and its existing claims to determine its merits.  Copyrights Copyright owners have the exclusive right to reproduce, distribute, and license their copyright. If anyone infringes on this right, the author has a claim for copyright infringement. Damages for copyright infringement lawsuits include profits made by infringing the copyright and damages for past infringement.  Copyright protections extend to the following: Music, literary, and artistic works; Pictures, graphics, and sculptural works;  Movies; Sound recordings; Computer software; and Architectural works. Copyright protections extend only to expressions, not to ideas, methods of operations, or concepts. Copyrights generally last for the life of the author plus 70 years. Trademarks  Trademarks serve to identify and […]

Continue Reading
Articles

The Complete Guide: Types of Patent Infringement

Jul 24, 2020 | By Ted Polasek | Read Time: 3 minutes

Having a patent gives you the right to prevent others from making, using, or selling your patented invention. If a company or individual does one of these things, the patent owner may have a cause of action for a patent infringement case.  If you believe someone has infringed on your patent or if you have been accused of patent infringement, reach out to an experienced patent litigation lawyer as soon as possible. Your lawyer can evaluate the claim and provide you with legal advice.  At The Polasek Law Firm, we can provide you with that advice.  We have been advising clients on patent infringement related issues for more than 25 years.  Please give us a call – we would be happy to talk to you.  The initial consultation is at no charge. What Is a Patent? The United States Patent and Trademark Office (USPTO) grants patents to inventions that are new, useful, non-obvious, and not excluded from patent eligibility under federal law.  A utility patent typically lasts for 20 years from filing of the application.  What Are the Different Types of Patent Infringement? There are several types of patent infringement. Infringement can be direct or indirect, and it can be literal or under the doctrine of equivalents. Direct Infringement Direct infringement occurs when someone directly violates your patent rights. That is, they make, use, sell, offer to sell or import your patented invention. Indirect Infringement Indirect infringement occurs when someone provides support for a directly infringing activity. Indirect infringement can be through inducement or contributory infringement. Induced Infringement Induced infringement occurs when a party with knowledge of the patent encourages or influences someone else to commit acts of infringement. For example, the person might provide someone with instructions for creating the patented invention. Contributory Infringement A person commits contributory infringement when they supply components of a patented invention knowing that the components will be used to infringe a patent. For contributory infringement to exist, the component must have no substantial non-infringing uses. For example, if someone sold a product that would be useful only if combined into a patented product, that might be considered contributory infringement. Literal Infringement Literal infringement occurs when a device or process literally meets every limitation in a patent claim. If even one component is different, it cannot be considered literal infringement. Infringement Under the Doctrine of Equivalents If someone has not literally infringed a patent, there still may be infringement under the doctrine of equivalents. Equivalent infringement may occur when the corresponding pieces of the accused product or process are not substantially different from the corresponding limitation in the claim of the patent. What Is The Effect Of Willful Patent Infringement? In the case of willful infringement, a court can triple the amount of damages that it would normally award to a patent holder. Infringement is not literally willful if an infringer had a good faith belief that it was not violating the patent or that the patent was invalid. In that case, they may still be liable for infringement.  What Types of Remedies Are Available for Patent Infringement? Remedies for patent infringement may include injunctive relief and damages. An injunction orders someone to stop their infringing actions.  Money damages are typically awarded for patent infringement under the patent laws, a patent owner is entitled to at least a reasonable royalty.  Additionally, in certain instances, a patent owner may be able to recover lost profits from an infringer. How Can The Polasek Law Firm Help You? John (Ted) Polasek has spent the past 25 years working on all types of patent infringement cases. He has experience with both enforcing patents and defending accused infringers. Ted believes in providing one-on-one personalized service for each client. Contact The Polasek Law Firm today through our online form, or give us a call at 832-802-6436 to schedule a free consultation. We are ready to help with your patent infringement case.

Continue Reading
Articles

What Is an Intellectual Property Lawyer?

Jul 24, 2020 | By Ted Polasek | Read Time: 4 minutes

An intellectual property lawyer is a lawyer who helps people register, protect, and make money from their unique ideas. The United States prides itself on ingenuity and innovation. Accordingly, multiple protections are available to those who invent and create. Despite these protections, the IP Commission reports that pirated software, counterfeit goods, and trade secret theft cost the U.S. economy between $225 and $600 billion every year. This goes to show just how valuable intellectual property can be. Unfortunately, the ins and outs of intellectual property, or IP, law can be hard to navigate without experience. That is why you should rely on an experienced intellectual property lawyer to help you protect your ideas. How Is Intellectual Property Protected? There are four main ways to protect intellectual property in the United States. Patent A patent gives an inventor the right to prevent others from “making, using, offering for sale, or selling” an invention for a certain period of time. Utility patents last for 20 years and apply to inventions and discoveries of useful and new products or processes. Design patents, on the other hand, apply to inventions of a new ornamental design for a product and last for only 15 years. Patents are designed to allow inventors to profit from their ideas by giving them time to develop, market, and sell their invention without interference. However, patents eventually expire so as not to unduly inhibit competition and innovation. Trademark Trademarks include things like logos, company or product names, and catchphrases. They are the things that make your product or company stand out from others. A trademark can be protected even if it is not registered. However, registering your trademark gives you broader protection and puts others on notice that you own the trademark. To register a trademark, you have to actually use it or intend to use it in commerce. Additionally, the trademark must be distinctive. The more distinctive your mark, the more protection it will receive. While trademarks can last indefinitely, you need to regularly renew your registered trademarks. Copyright Copyright gives the owner the exclusive right to copy a work. It pertains mostly to creative works such as books, music, visual art, photographs, video, and other media. Rules have changed over the years regarding how long a copyright lasts. However, the current rules apply to anything created after January 1, 1978. If the author is one or more individuals, the copyright lasts for the longest surviving author?s lifetime plus 70 years. If the author is an institution or is anonymous, the copyright lasts for 95 years from the time of publication or 120 years from the time of creation, whichever comes first. Trade Secrets Trade secrets include inventions, processes, designs, compilations, etc. that have economic value to a business because of their secrecy. Trade secrets are protected by secrecy rather than registration. There is no limit on how long you can keep a trade secret as long as you take adequate steps to protect it. Even if your secret is stolen, there are laws in place that may allow you to stop others from using or profiting from your secrets. What Is an Intellectual Property Lawyer? An intellectual property lawyer can advise you on the best way to preserve your IP rights and profit from your ideas. As discussed above, there are several possible ways to protect your intellectual property, but without proper advice, it’s easy to take the wrong path. For example, let’s say you have invented a new machine that will speed up the production of widgets. In that case, there is actually more than one way to protect your invention from IP infringement. The best method for you depends on how you plan to use the invention. If you plan to market your machine to manufacturers, then you will want to file for a patent so that you maintain the exclusive right to develop and sell the machine for the length of the patent. On the other hand, if you intend to use the machine to develop widgets yourself, and it will keep the machine secret, you may be better off relying on trade secret protection rather than registering a patent. A patent will expire after 20 years, but you can keep a trade secret indefinitely.  Your IP attorney can discuss these types of questions with you and help you determine the best way to protect your ideas. Your attorney can also help you take action if someone tries to use your intellectual property illegally. They may send a letter insisting that the person stop their infringement. If the person refuses, then your attorney can file a lawsuit and seek money damages, and possibly an injunction. How Can Polasek Law Help with Your IP Needs? John (Ted) Polasek has spent the past 25 years helping clients all over the country to establish and enforce their IP rights. Ted focuses on helping inventors and companies enforce their patent, trademark, and trade secret rights or defending companies accused of violating these rights of others. Ted can also help you apply for and obtain trademarks.  He provides the type of individualized attention that you can’t find at larger firms, and he offers flexible fee arrangements to meet your personal needs. Call or contact Polasek Law today to schedule a free initial consultation and learn what Ted can do for you.

Continue Reading
Articles

What Does an Intellectual Property Lawyer Do?

Jul 24, 2020 | By Ted Polasek | Read Time: 3 minutes

Intellectual property lawyers focus on helping you protect and profit from your ideas and creations. Intellectual property, or IP, plays a huge role in the United States economy. According to a report by the U.S. Commerce Department in 2016, IP-intensive industries account for 38.2%, or $6 trillion, of the United States? gross domestic product (GDP) and support at least 45 million U.S. jobs. In other words, there is a lot of money at stake when it comes to intellectual property. So it is important that you take the right steps to protect yours. An experienced IP lawyer can advise you on the best way to preserve your intellectual property rights and how to use them to grow your business. If you want to learn more about what an intellectual property lawyer does, keep reading.? What Does an IP Lawyer Do? An intellectual property lawyer can advise you on anything related to intellectual property. Common examples of intellectual property include: Inventions, Algorithms, Processes, Music, Client lists, Photographs and video, Books and other written material, Secret recipes or formulas, Product or company names, Unique catchphrases, and Logos. An IP lawyer can help you identify the type of protection you need for your intellectual property. They can also help you properly register your intellectual property and enforce your rights against infringement.  When Should You Consult an Intellectual Property Attorney? Any time you have a question relating to intellectual property, you can rely on an experienced IP lawyer to advise you. However, there are a few specific situations when an intellectual property attorney will be most helpful. You Want to Protect Your Intellectual Property Intellectual property protection falls into four main categories: patent, trademark, copyright, and trade secrets. Sometimes you may need more than one type of protection for your intellectual property. In other situations, you may need to choose the type of protection that makes the most sense for your needs. An IP lawyer will advise you on how to protect your intellectual property in a manner that furthers your individual goals. They can also make sure you correctly register your IP and put appropriate procedures in place to preserve your rights. You Want to Stop Someone Else from Using Your Intellectual Property If someone infringes on your intellectual property rights, it is important to take prompt action. In some cases, sleeping on your rights can weaken or bar your IP claim. Additionally, allowing IP violations to go unchallenged can cost you licensing revenue, cut into your market share, or reduce the value of your product. Your attorney may start by asking the infringer to stop using your IP. If they refuse, then your attorney can file a lawsuit and enforce your rights in court. You Want to License Your Intellectual Property One of the ways to create revenue from your intellectual property is by licensing it to others. For example, a website might pay you a fee to use a photograph you took. Or you can sell a license to use software on a limited number of devices.  Another way is to license your patent. Licensing your intellectual property can involve complicated agreements that define your rights and obligations as well as those of the licensee. Important terms may include: Limitations on how the licensee can use the IP; Whether the rights granted to the licensee are exclusive; Whether the licensee can modify or improve on the IP; The compensation that will be paid for the license;  Whether the license can be assigned;  Requirements to maintain the license; and Remedies for violating the agreement. It is important to have an attorney draft or review the terms of any licensing agreement. Your attorney can help you negotiate favorable terms and understand how the agreement will affect you. What Does an Intellectual Property Lawyer Do for You? When you hire an intellectual property lawyer at The Polasek Law Firm, you can feel confident that your IP will be protected. Attorney John (Ted) Polasek has been helping people to protect and benefit from their intellectual property for nearly 25 years. Ted understands how important responsive, hands-on service is to clients. Intellectual property can be a very personal thing, representing your individual creativity and ingenuity, and you need someone who will value your IP the way you do. Call or fill out an online form to schedule a free consultation with Ted, and learn how he can help you protect your ideas.

Continue Reading
Articles

Reasonable Royalty Damages For Patent Infringement

Jul 20, 2020 | By Ted Polasek | Read Time: 2 minutes

Damages for Patent Infringement If you have a patent that you believe is being infringed, you may have questions about recoverable damages. You may be asking ?what are the damages for patent infringement, and how do I prove damages?? Or if you are being accused of infringement, you may be asking ?what is the value of this patent?? The Federal Circuit?s opinion in Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., decided July 3, 2018, provides a good analysis of damages for patent infringement. The Statute 35 U.S.C. Section 284 provides that ?the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer?.? Appointment Power Integrations is another case that considers apportionment between the infringing and non-infringing features of the accused product, and application of the entire market value rule. The Federal Circuit stated ?As a substantive matter, it is the ?value of what was taken? that measures a ?reasonable royalty?? and ?it is only the patented technology that is taken from the owner, so the value to be determined is only the value that the infringing features contribute to the value of an accused product.? When the infringing device has multiple components, the Court stated: ?[w]e have articulated that, where multi-component products are accused of infringement, the royalty base should not be larger than the smallest salable unit embodying the patented invention.? Yet, this may not end the inquiry in deciding the appropriate royalty base. In Power Integrations, the Court stated that even if the smallest salable unit is used, the patent owner must still establish what portion is attributable to the patented technology when the smallest salable unit itself contains several non-infringing features. Entire Market Value Rule In Power Integrations, the Court described the ?entire market value rule? (?EMVR?) as ?a demanding alternative to our general rule of apportionment.? The EMVR allows patent owners to recover damages based on the value of the entire apparatus containing multiple features when the patented feature constitutes the basis for the consumer demand. However, there are ?strict requirements? that limit the EMVR: ?If the product has other valuable features that also contribute to driving consumer demand ? patented or unpatented- then the damages for the patent infringement must be apportioned to reflect only the value of the patented feature. This is so whenever the claimed feature does not define the entirety of the commercial product. In some circumstances, for example, where the other features are simply generic and/or conventional and hence of little distinguishing character, it may be appropriate to use the entire value of the product because the patented feature accounts for almost all of the value of the product as a whole.? Although this sounds helpful to patent owners, the Federal Circuit cautioned that the EMVR ?is appropriate only when the patented feature is the sole driver of customer demand or substantially creates the value of the component parts.? If the accused infringer provides evidence that its product has other valuable features, the patent owner has the burden to establish those features are not relevant to consumer choice ? those other features did not influence purchasing decisions. The Court?s opinion provides a good summary of the evidence (and argument) on these issues and is certainly worth reading to consider how a potential case will measure up. If you have a patent that you believe is being infringed or if someone is alleging that you owe damages for patent infringement, please see our Litigation page and contact us at 832-485-3560.

Continue Reading
Articles

US Supreme Court Allows Recovery Of Lost Foreign Profits

Jul 20, 2020 | By Ted Polasek | Read Time: < 1 minute

In?WesternGeco LLC v. ION Geophysical Corp, decided today, the U.S. Supreme Court held that 35 U.S.C. Sections 271(f)(2) and 284 allow a patent owner to recover damages in the form of a reasonable royalty and lost?foreign?profits for patent infringement. In this case, the defendant manufactured the components in the United States, but then shipped those components (unassembled) abroad to companies for assembly and subsequent use of the assembled system. At trial, the plaintiff presented evidence that it had lost 10 contracts due to this activity. The jury awarded $12.5 million in royalties and $93.4 million in lost profits. At issue was the extraterritoriality reach of U.S. patent law. Authoring the opinion for the Court, Justice Thomas stated ?[t]he conduct in this case that is relevant to that focus clearly occurred in the United States, as it was ION?s domestic act of supplying the components that infringed?WesternGeco?s?patents.? The Court held that the lost-profits awarded to the patent owner was a domestic application of Section 284: ?Taken together, [Section] 271(f)(2) and [Section] 284 allow the patent owner to recover for lost foreign profits.?

Continue Reading
Articles

Pick Your Registered Agent Carefully

Jul 20, 2020 | By Ted Polasek | Read Time: < 1 minute

Domestic companies incorporated in the state of Texas (and other multi-judicial district states) accused of?patent?infringement have an additional tool in their venue arsenal. The Federal Circuit ruled last week in?In re BigCommerce?that a domestic company incorporated in a state having multiple judicial districts (such as Texas) ?resides? for purposes of the patent venue statute only in the single district within that state where it maintains a principal place of business, and if it does not maintain a ?principal place of business? in the state, in the judicial district where its registered agent is located. The decision also provides direction on what constitutes a company?s ?principal place of business.? In this case, the defendant accused of patent infringement maintained its principal place of business in the Western District of Texas. This case originated from litigation filed in the Eastern District of Texas. This is an interesting decision because under the facts of the case it appears the Federal Circuit did not have to include the registered agent aspect in its test. Many companies retain an outside company to act as its registered agent. This part of the Court?s ruling suggests that a company incorporated under Texas law (but not having its principal place of business in Texas) that is concerned about being sued for patent infringement in Texas, such as East Texas, may be able to impact venue through its choice of its registered agent.

Continue Reading