Archive for the ‘Litigation’ Category

When is a Patent Owner Entitled to a Court Order Stopping Infringement?

Monday, December 31st, 2012

apple v samsung

Consider this scenario: you have gone to all the time and expense to obtain a patent from the U.S. Patent and Trademark Office.   You have launched your product and your sales are good.  Now a pirate is copying your product and stealing your sales.  Are you entitled to a court order stopping infringement of your patent?

Before the U.S. Supreme Court decided the case of eBay v MercExchange in 2006, the answer would have been a resounding ‘yes.’  After the eBay case, the patent holder must demonstrate, among other things, ‘irreparable harm’ from the infringement and that an award of money damages to the patent holder is not enough to compensate the patent holder.  It is not enough to show harm – the patent holder must show that copying of the features specifically protected by the patent caused the harm.

The most recent application of the eBay decision is the ongoing worldwide Apple v Samsung litigation.  Apple recently proved that among other things Samsung copied Apple’s patented designs for the iPhone and iPad.  Apple was awarded a money judgment for $1.049 billion (that’s billion, with a ‘b’).   The trial judge decided on December 17 that Apple is not entitled to an injunction stopping Samsung from selling the infringing products.  The judge concluded that Apple did not show that the harm to Apple resulted from the specific infringement in question.  Apple still has the right to appeal the denial of the injunction to the Federal Circuit Court of Appeals.  Stay tuned.

– Robert Yarbrough, Esq.

Posted in Federal Courts, Litigation, Patent | No Comments »

Who Pays For Patent Litigation?

Wednesday, October 31st, 2012

dollar Your company is threatened with a lawsuit for patent infringement.  You are confident that your product does not infringe.  Should you fight or should you surrender?

These are very real questions that businesses face every day.  According to a 2009 survey by the American Intellectual Property Law Association, the average cost for infringement litigation through the end of discovery was $2.5 million where the amount in controversy was between $1 million and $25 million.  These costs do not include the costs of the trial or of any appeals.

In short, your attorneys’ fees may well hit seven figures.  Whether you can collect those fees may well determine whether it makes sense for you to fight or to cave.  So can you collect your attorneys’ fees from the patent owner when you win the infringement lawsuit?

In the U.S., the answer generally is ‘no.’  The patent statute tracks the ‘American Rule’ and allows the prevailing party to collect its attorney’s fees only in ‘exceptional circumstances.’  The Federal Circuit has generally held that ‘exceptional circumstances’ occur and an accused infringer is entitled to an award of its attorney’s fees where the litigation is frivolous or the patent owner committed misconduct in obtaining the patent or in the litigation.  The Federal Circuit also has held that ‘exceptional circumstances’ occur when the litigation is both (a) brought in subjective bad faith and (b) objectively baseless.

The law elsewhere is different.  The ‘British Rule’ allows the prevailing party routinely to collect its attorneys’ fees.

–Robert Yarbrough, Esq.

Posted in Litigation, Patent | No Comments »