Declaratory action OK despite that DJ-plaintiff didn’t sell or manufacture the product

Asia Vital v. Asetek was decided on September 8, 2016 on appeal from the Eastern District of Virginia. There, the district court dismissed Asia Vital’s declaratory judgment action for lack of subject matter jurisdiction. After bringing suits against other competitors, Asetek sent Asia Vital a letter, accusing it of manufacturing an infringing …

Question of subjective willful misconduct is for the jury

Innovention v. MGA is a nonprecedential case decided on August 5, 2016 on appeal from the Eastern District of Louisiana. There, the district court, after a jury trial finding willfulness, awarded enhanced damages (on Seagate’s clear and convincing standard for willfulness) and attorney fees for defendant MGA’s infringement. The Federal Circuit …

Foreign suit doesn’t rebut laches presumption unless defendant knows of the subsequent US suit

Lismont v. Alexander Binzel was decided on February 16, 2016 on appeal from the Eastern District of Virginia. There, the district court granted summary judgment for Alexander Binzel, concluding that Lismont’s inventorship claim, which he filed in the US (in 2012) ten years after the patent issued, was barred by laches. Throughout …

Treble attorney fees for defending against a fraudulently obtained patent

TransWeb v. 3M was decided on February 10, 2016 on appeal from the District of New Jersey.  Prior than one year before the priority date of the asserted patents, defendant TransWeb’s founder handed out samples (that were arguably prior art) at an industry exposition. The jury found plaintiff 3M’s patents invalid …

Knowledge of the grandparent patent provides no actual notice for pre-issuance damages

Rosebud v. Adobe was decided on February 9, 2016 on appeal from the District of Delaware. The suit revolved around the ‘280 patent, a continuation of the ‘699 patent, which itself is a continuation of the ‘760 patent (the grandparent patent). There, the district court granted defendant-Adobe’s motion for summary judgment that …

For standard-essential patent damages, courts must discount the value of standardization

Scientific v. Cisco was decided on December 3, 2015 on appeal from the Eastern District of Texas. There, the patent-in-suit concerned wireless local area network technology, and was included in the 802.11a “Wi-Fi” standard (first published in 1999).  Around 2003, plaintiff Scientific developed a form license offer (“the Rate Card”), which it …

Laches may bar the recovery of damages for a suit brought within the limitations period

SCA Hygiene v. First Quality was decided en banc on September 18, 2015 on appeal from the Western District of Kentucky. Late October in 2003, plaintiff SCA alleged through a letter that defendant First Quality’s absorbent diapers infringed its patent. First Quality replied about a month later that the patent was invalid. In July …

Pre-reexamination damages not proper where patentee narrowed the claim during reexam

R+L Carriers v. Qualcomm was decided on September 17, 2015 on appeal from the Southern District of Ohio. There, after bringing suit, the plaintiff R+L filed for ex parte reexamination of the patent-in-suit. Although the patent survived reexam, R+L added language to the claim at issue. Because defendant Qualcomm ceased its alleged infringing …

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. …

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 …