Jul 19, 2017

Willful Patent Infringement and Enhanced Damages


Stryker and Zimmer are competitors selling devices which are a combination spray gun and suction tube for cleaning tissue during surgery. In 2010, Stryker sued Zimmer for patent infringement and a jury found that Zimmer willful infringed Stryker’s patents. The district court trebled damages and awarded $228 million based on evidence that Zimmer copied Stryker’s products and accepted the risk of legal consequences given its high-risk/high reward competition strategy. On appeal, the Federal Circuit affirmed the jury’s finding of infringement but, applying its 2007 Seagate (497 F.3d 1360 (2007)) test, vacated the enhanced damages award because Zimmer had asserted “reasonable… Read more

Aug 2, 2016

The Importance of a Well Drafted License and Arbitration Clause

By: Joyce Klemmer The Patent Act was amended in 1982 to recognize voluntary arbitration for patent disputes relating to validity or infringement and courts have extended the provision to include interference claims and questions of inventorship. 35 U.S.C. § 294.  “The Federal Arbitration Act mandates enforcement of valid, written arbitration provisions. When a party moves to compel arbitration of a dispute, a court must determine whether the parties agreed to arbitrate that dispute. This inquiry requires a court to determine whether the dispute between the parties falls within the scope of the arbitration agreement.  Thus, ‘a court may order arbitration… Read more

Jan 28, 2016

Copyright and the Repair of Digital Devices

Copyright and the Repair of Digital Devices Section 1201 of the Digital Millennium Copyright Act (“DMCA”) prohibits breaking technological locks protecting copyrighted content.  Since the passage of the DMCA almost 20 years ago, many of the devices that we now use on a daily basis are controlled by computer software.  Even if you own the device, you probably only have a license to the software that controls it.  If that software comes with digital locks – technical protection measures (“TPMs”) you cannot fix the device yourself, or take it to an independent repair shop, without violating the DMCA. The Electronic… Read more

Jan 21, 2016

Will the Supreme Court Clarify the Standard for Awarding Attorneys’ Fees under §505 of the Copyright Act?

The Supreme Court has granted certiorari to address the standards to be applied in awarding attorney’s fees under  17 U.S.C.§505 of the Copyright Act. At issue is whether Supap Kirtsaeng, the prevailing defendant in a copyright lawsuit, should be awarded his attorney’s fees.  This is Mr. Kirtsaeng’s second trip to the Supreme Court. The  Court held in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013) that under the “first sale” doctrine (codified at 17 U.S.C. §109(a)), Kirtsaeng, as the lawful owner of the particular physical copy of the textbook purchased abroad, was permitted to resell that… Read more