Patent Damages
19Apr/11Off

House Passes Manager’s Amendment to H.R. 1249; Omits Damages

Posted by Chris Marchese

On April 15, the House Judiciary Committee approved an amended version of the America Invents Act, designated H.R. 1249.  You may recall from previous posts that the House’s version of the patent reform bill did not include changes to existing damages provisions or other litigation-related provisions of the patent statute.  The House Judiciary Committee formulated a “Manager’s Amendment” that made changes to H.R. 1249, but the amended language still omits damages reform.  The Manager’s Amendment can be found at http://judiciary.house.gov/hearings/pdf/ManagersAmerndment04142011.pdf.

1Apr/11Off

House to Hold Patent Reform Hearing Today

Posted by Chris Marchese

The House has provided a designation for its new patent reform bill, H.R. 1249.  The bill was formally introduced on March 30.  The House held hearings on the bill and heard testimony from the following witnesses:  PTO Director David Kappos, Steven Miller of Procter & Gamble, Mark Chandler of Cisco, Steve Bartlett of Financial Services Roundtable, and John Vaughn of the Association of American Universities.

The house bill can be found at:  http://www.ipo.org/AM/Template.cfm?Section=Home&TEMPLATE=/CM/ContentDisplay.cfm&CONTENTID=29174.  It does not contain the judicial gatekeeping functions for damages that the Senate bill features.  It is difficult to say, at this point, what will happen to the damages provisions that are in the Senate bill – will they find their way into a bipartisan bill?  Only time will tell.

Stay tuned.  We will keep you posted on new developments.

30Mar/11Off

House to Hold Patent Reform Hearing Today

Posted by Chris Marchese

Correction:  Our post below indicates that S.23 still contains the damages provisions.  The damages provisions were removed from the Senate bill that passed on March 8.

The House Judiciary Committee will hold a hearing on new House-based patent reform legislation (H.R. ____; number as yet) that is expected to be very similar to “America Invents Act” S.23, which the Senate passed on March 8, 2011. A March 24, 2011 version of the House bill can be seen at http://docs.piausa.org/112th-Congress/HouseBill/HousePatentReformDraft-SLS_132_xml.pdf. This draft of the House bill does not appear to include the damages provisions that are contained in S.23.

House Judiciary Committee Chairman Lamar Smith is expected to introduce the patent bill this morning (Wednesday).  A number of witnesses are expected to testify at the hearing including Witnesses at the hearing will include PTO Director David Kappos, Jon Vaughn, Vice President of the Association of American Universities, and several individuals from private industry.

We are sure there will be much more to report in the coming days and weeks and will keep you posted on new developments as they happen.

9Mar/11Off

Senate Passes S.23 “America Invents Act” by 95-5 Vote

Posted by Chris Marchese

Correction:  Our post below indicates that S.23 still contains the damages provisions.  The damages provisions were removed from the Senate bill that passed on March 8.

Patent reform legislation has picked up a head of steam and is moving in earnest towards becoming law.  Today, March 8, the Senate issued the results of its vote on S.23, the “America Invents Act,” reporting that it passed by a landslide:  95-5.  The following are Senator Patrick Leahy’s comments on the Act:

Today, the Senate voted 95-5 to pass S. 23, the America Invents Act.

After six years of debate and discussion, the Senate has finally acted to make the first meaningful, comprehensive reforms to the nation’s patent system in nearly 60 years.  Passage of the America Invents Act demonstrates what we can accomplish when we cast aside partisan rhetoric, and focus on working together for the American people and for our future.

The America Invents Act will promote American innovation, create American jobs and grow America’s economy, all without spending a penny of taxpayer money.  It is commonsense legislation that will help preserve America’s position as the global leader in invention and innovation.

The year has changed since Chairman Smith and Mr. Berman introduced the first version of patent reform legislation in 2005 in the House, but the structure and guiding principles of the legislation remain the same.  Having coordinated with the leaders in the House through this process, I hope that the House will look favorably on our work and adopt this measure so that it can be sent it to the President without delay and its improvements can take effect in order to encourage American innovation and promote American invention.

8Mar/11Off

Are We Getting Close to Patent Reform? Senate Test Vote Overwhelmingly in Favor of Patent Reform Bill S.23

Posted by Chris Marchese

We have been posting over the past few weeks about developments in Congress’ effort to reform the Patent Act.  On March 7, the Senate allowed a test vote for the full legislative reform bill (S.23) and Senator Leahy’s Manager’s Amendment.  The latter codifies a gatekeeping role for district courts but does not include the detailed provisions on entire market value rule and apportionment that previous bills contained. The test vote on the entire bill, including the Manager’s Amendment, passed by a landslide vote of 87-3.  The bill needed 60 votes to avoid a possible filibuster, and the bill made it with room to spare.

2Mar/11Off

Senate Adopts Senator Leahy’s Amendment to Patent Reform Bill S.23

Posted by Chris Marchese

We have been posting over the past few weeks about developments in Congress’ effort to reform the Patent Act.  On March 2, the Senate debated the full legislative reform bill (S.23) and Senator Leahy’s Manager’s Amendment, which has been the subject of previous posts. The Manager’s Amendment codifies a gatekeeping role for district courts but does not include the detailed provisions on entire market value rule and apportionment that previous bills contained.  The Senate passed the Manager’s Amendment by a landslide vote of 97-2.

For a comprehensive analysis of legislative damages reform, and for links to the Congressional patent reform bills, including the Manager’s Amendment, you can take a look at Fish & Richardson’s legislative reform web page that’s specific to patent damages: http://www.fr.com/legislativereform/Generic.aspx.

22Feb/11Off

Senate to Consider Patent Reform Legislation

Posted by Chris Marchese

Back in early February, we posted on a new bill (S.23) introduced on January 25 by Senator Patrick Leahy, who is chairman of the Senate Judiciary Committee. The bill contains numerous modifications to the patent statute, including damages reform.  The damages reform is the same as that introduced by Senator Leahy last year in a Manager’s Amendment, including a procedural gatekeeping role for federal courts.

On February 28, the full Senate will begin debating the comprehensive patent legislation (S.23), including the damages reform.

For a comprehensive analysis of legislative damages reform, and for links to the Congressional patent reform bills, including the Manager’s Amendment, you can take a look at Fish & Richardson’s legislative reform web page that’s specific to patent damages: http://www.fr.com/legislativereform/Generic.aspx.

2Feb/11Off

Senate Judiciary Committee to Consider Patent Reform Bill

Posted by Chris Marchese

On February 3, the Senate Judiciary Committee will consider the patent reform bill introduced on January 25 by Senator Patrick Leahy, who is chairman of the Committee. Senator Leahy’s bill (S.23) contains numerous modifications to the patent statute, including damages reform.

29Oct/10Off

Fish & Richardson patent damages seminar in NYC on 11/10

Posted by Chris Marchese

Chris and Justin (your blog authors) are giving a seminar on patent damages in New York City on November 10, 2010.  The event will be held at Fish & Richardson's office in New York City, 601 Lexington Ave., New York, NY 10152, (212) 765-5070.  The seminar is open to anyone who is interested.  For more information and sign-up, see http://www.fr.com/damages-seminar-new-york/.

We previously put on this seminar in Minneapolis, Boston, and San Diego.  We do the seminar with two of our F&R partners, Jack Skenyon from the Boston office, and Michael Florey from the Twin Cities office.  The seminar is called:  Taming the Wild West of Patent Damages: Is There a New Sheriff in Town?  The following is a quick summary:

Patent damages law has come to the forefront in recent years, as juries have increasingly awarded large sums to plaintiffs, and Congress has stepped into the fray in an effort to rein-in patent damages. Reacting to the escalating damages awards and Congress' efforts, the judiciary has recently issued a flurry of opinions that may be changing the patent damages landscape permanently, and policing the previously untamed law of patent damages.

Please join us for a timely discussion led by attorneys who have literally written the book on patent damages and who are strategically guiding clients through this challenging area of patent law and litigation.

Key topics:

  • When will Congress pass legislation reforming damages law, what will it address, and what impact will it have?
  • Have recent cases - such as Lucent v. Gateway, Cornell v. Hewlett-Packard, i4i, Wordtech, and ResQNet - changed the law?
  • Are trial judges now acting as gatekeepers to prevent juries from hearing unsound damages theories?
  • What can be done in preparing a damages case to avoid running afoul, or take advantage, of the recent case law?

We hope to see you there!

 

4Oct/10Off

New article by Drew Voth and David Binney: "Recent Court Opinions Impact Patent Valuation" — addresses entire market value rule and apportionment

Posted by Chris Marchese

With permission, we direct our readers to an interesting article on apportioning value to patents.  This article covers subject matter that is near and dear to these bloggers:  entire market value rule and apportionment.  In fact, one of us, Chris Marchese, wrote an article on the same topics that was published in the LA Daily Journal.  (See our August 31 post.)

The authors, Drew Voth and David Binney, provided the following summary of their article:  "Spurred by increasing damages awards, Congress and the courts have been moving toward more stringent requirements for apportioning value to patents.  In this edition of the Business Valuation Monitor, Drew Voth, a Damages Expert at Grant Thornton, and David Binney, a Partner at K&L Gates, examine historic and recent court rulings to demonstrate apportionment trends and to discuss the methods for companies to use when analyzing apportionment issues and the value of their patents."

Click here to read the article:  Business Valuation Monitor