Sign In

Judicial Advocacy 2015

Cuozzo Speed Technologies, LLC v. Lee, U.S., No. 15-446, amicus brief filed 11/9/2015.

​AIPLA, in a November 9, 2015 ami​cus brief, urged the Supreme Court to grant certiorari in Cuozzo Speed Technologies, LLC v. Lee to address the proper standard for patent claim construction used by the Patent Trial and Appeal Board (PTAB) in post-grant trials under the Leahy-Smith America Invents Act (AIA). According to the brief, the post-grant trials were established to be “an inexpensive alternative to testing patent validity in district court.” The brief points out that Congress intended those trials be adjudications that following the district court manner of interpreting patent claims under Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005)(en banc), rather than the examination standard of the “broadest reasonable interpretation” currently used by the PTAB. The brief also argues that use of differing standards may result in inconsistent claim constructions in simultaneous proceedings on the same patent and, effectively negates the presumption of patent validity.

Halo Electronics, Inc. v. Pulse Electronics, Inc., and Stryker Corporation v. Zimmer, Inc., (consolidated cases), U.S., Nos. 14-1513 and 14-1520, amicus brief filed 12/16/2015.

AIPLA, in a December 16, 2015 amicus brief, argued to the Supreme Court that it should adopt a subjective bad faith standard for willful patent infringement. The brief argues that it is well settled that proof of willfulness is required for an award of enhanced damages against patent infringers. Although the standard of In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), was meant to curtail excessive claims and findings of willful infringement, that standard goes too far, allowing blameworthy conduct to go unpunished. The standard for willfulne​ss should be predictable enough to ensure consistent application by the lower courts, and a subjective bad faith standard is more consistent with Supreme Court precedent and the purpose of enhanced damages, the brief concluded.

Akamai Technologies, Inc. v. Limelight Networks, Inc., Fed. Cir., No. 2009-1372, amicus brief filed 6/24/2015.

AIPLA, in a June 24, 2015 amicus brief, argued to the Federal Circuit that it should grant en banc review of the Court’s panel decision that 35 U.S.C. 271(a) incorporates no joint tortfeasor principles for joint infringement, and that indirect infringement liability must be based on direct infringement by a single entity.  According to the brief, the panel decision is at odds with the plain language of the Patent Act; continues conflicts and tensions with longstanding common law concepts of joint tortfeasor liability; and creates a gaping loophole in infringement liability.  The brief contended that the single entity rule would make it nearly impossible for certain method patent holders to enforce their patents against joint infringers, permitting evasion of patent rights and the development of business models designed to misappropriate the patented methods of others.

Lexmark International, Inc. v. Impression Products, Inc., Fed. Cir., No. 2014-1617, amicus brief filed 6/5/2015.

AIPLA, in a June 5, 2015 amicus brief, argued to the en banc Federal Circuit that the Supreme Court decisions in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), and Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), require no change to the Federal Circuit law of patent exhaustion and conditional sales. The brief explains that Kirtsaeng, which interprets a copyright statute setting out the rights of an owner of a copy under the copyright “first sale” doctrine, is not controlling of the longstanding patent exhaustion doctrine set out in Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001). It further explains that Quanta, which found that sale limitations in a Master Agreement rather than in a patent license failed to avoid patent exhaustion, was a case-specific application of the rules of conditional sales set out in Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992).

Belmora LL v. Bayer Consumer Care AG, 4th Cir., No. 15-1335, amicus brief filed 6/2/2015.

AIPLA argued in an amicus brief to the Fourth Circuit that the “well known marks” doctrine is encompassed in the Lanham Act. Specifically, the brief maintains that a foreign owner of a well-known mark has Lanham Act standing in U.S. courts and in the U.S. Patent and Trademark Office to protect its mark from consumer confusion in the United States, even though it has not used its mark in the United States. According to the brief, the Lanham Act permits any person damaged by commercial acts of misrepresentation or false association to obtain the relief provided by the statute, and such harm satisfies the traditional requirements of standing under U.S law.

SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, Fed. Cir., No. 2013-1564, amicus brief filed 3/10/2015.

AIPLA, in a March 10, 2015 amicus brief, argued to the en banc Federal Circuit that the rules on laches in patent cases, as stated in A.C. Aukerman Co. v R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992), should be overruled in response to the Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer, 1354 S. Ct. 1962 (2014).  Petrella recognized a copyright plaintiff’s “right to sue” during the statutorily provided period for commencing civil actions under 17 U.S.C. § 507(b).  Aukerman conflicts with that decision in holding that laches can bar a claim for damages based on patent infringement occurring within the six-year limitations period established by 35 U.S.C. § 286.  Despite their differences, both statutes provide a fixed time for seeking damages which laches cannot curtail.

Kimble v. Marvel Enterprises, Inc., U.S. No. 13-720, amicus brief filed 2/4/2015.

AIPLA, in a February 4, 2015 amicus brief, argued to the Supreme Court that it should not overturn the per se rule in Brulotte v. Thys Co. against patent license requirements for royalty payments for uses of the claimed invention after the patent expires. Although the decision has been widely criticized, those criticisms are based on an overreading of the opinion as an antitrust decision rather as an application of a fundamental principal of patent policy that patent exclusivity is limited in time. The per se unenforceability of license provisions requiring royalties for post-expiration uses is a clear rule that reduces uncertainties about what royalty practices are permitted and which are not. According to the brief, Brulotte is critical to limiting a patent holder’s ability to extend its exclusive rights beyond the congressionally-mandated patent term.

Commil USA, LLC v. Cisco Systems, Inc., U.S. No. 13-896, amicus brief filed 1/27/15.

AIPLA, in a January 27, 2015 amicus brief, argued to the Supreme Court that a defendant’s belief of invalidity should not be a defense to induced infringement under Section 271(b) of the Patent Act. The brief, filed in support of neither party, contended that infringement and validity are separate and distinct concepts, and there is no basis in either the statute or the legislative history for considering a belief about patent validity in determining a violation of Section 271(b). Doing so, according to the brief, will result in unexpected consequences with respect to the law of infringement and will erode Section 271(b)’s effectiveness.​​​​​​​​​​​​​​