District court’s denial of attorney fees is vacated in light of Octane Fitness

Adjustacam v. Newegg is a nonprecedential case decided on September 17, 2015 on appeal from the Eastern District of Texas. There, after dismissing the case, the district court denied defendant Newegg’s motion for attorney fees under the then-prevailing Brooks Furniture standard. Newegg appealed the denial of fees. Plaintiff AdjustaCam appealed claim construction. …

Attorney fees grant vacated where underlying noninfringement decision was also vacated

TNS Media Research v. TiVo is a nonprecedential case decided on September 16, 2015 on appeal from the Southern District of New York. There, after plaintiff TNS filed suit against defendant TiVo seeking a declaratory judgment of noninfringement, TiVo counterclaimed for infringement of the patent. The district court granted TNS’s motion as to noninfringement and …

Patentee may show demand under Panduit without making a single sale during the damages period

Versata v. SAP was decided on May 1, 2013. The case involved many issues but this post will only focus on lost profits. The patented invention related to organizing pricing information. The jury found that defendant SAP infringed plaintiff Versata’s asserted claims, and awarded $260 million in lost profits and …

Preliminary injunction vacated because defendant’s obviousness argument raised a substantial question of invalidity

Sciele Pharma v. Lupin was decided on July 1, 2012 on appeal from the District of Delaware. The district court granted plaintiff Sciele a preliminary injunction prohibiting defendant Lupin from “further importation and sales of its generic [product].” Lupin appealed. The Federal Circuit vacated the preliminary injunction and remanded. “In deciding whether …

Letter identifying relevant patents and allegedly infringing conduct provided actual notice for pre-complaint damages

Monsanto v. Bowman was decided on September 21, 2011 on appeal from the Southern District of Indiana. The case involved many issues but this post will only focus on actual notice under § 287(a). “Since 1996, Monsanto has marketed and sold .. soybean seeds under its own brands, and licenses its technology to seed …

Past harms of competitor’s lost market share, revenues, and brand recognition support permanent injunction

I4I v. Microsoft was decided on March 9, 2010 on appeal from the Eastern District of Texas. The case involved a host of issues, but this post will only deal with the injunction. In the case, the jury found that defendant Microsoft willfully infringed the asserted claims of the patent.  After trial, …

Price erosion and loss of market share tip the balance of the hardships in favor of an injunction

Canon v. GCC is a non-precedential opinion decided on January 25, 2008 on appeal from the Southern District of New York. The district court granted plaintiff Canon a preliminary injunction. Defendant GCC appealed. The Federal Circuit affirmed the preliminary injunction grant. A patent owner seeking a preliminary injunction must show: “(1) a reasonable likelihood …

Courts must apply the four-factor test before granting or denying a permanent injunction

eBay v. MerkExchange was decided by the Supreme Court on May 15, 2006 on appeal from the Eastern District of Virginia. Following a jury verdict of infringement, the district court denied plaintiff MerkExchange’s motion for a permanent injunction. The Federal Circuit reversed and ruled that MerkExchange was entitled to an injunction, applying …

Letter provided notice of infringement when viewed together with other communications between the parties

Gart v. Logitech was decided on August 21, 2001 on appeal from the Central District of California. The case involved many issues but this post will only focus on actual notice under § 287(a). In 1989, prior to the issuance of the patent-in-suit, plaintiff Gart approached defendant Logitech to discuss licensing the …

Letter offering a nonexclusive license provided actual notice of infringement despite not threatening a lawsuit

SRI International v. Advanced Technology Laboratories was decided on October 23, 1997 on appeal from the Northern District of California. The case involved many issues but this post will only focus on actual notice under § 287(a). In May 1986, plaintiff SRI sent a letter to defendant Advanced Technology Laboratories (ATL) offering a non-exclusive license. …