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Recent Court Decisions Regarding Actual Notice of Patent Infringement
Consider the following hypothetical situation. Mr. Jones, an engineer with your Company XYZ, informs you that a supplier for XYZ saw a rival company's Product X, which appeared quite similar to the one currently in development at XYZ. Mr. Jones tells you that representatives of XYZ had mentioned that Product X is patented. Should you (a) disregard what Mr. Jones has told you, (b) await word from attorneys for Product X, (c) contact attorneys for Product X to discuss possible infringement issues, or (d) request a formal opinion from outside counsel?
The understanding of what constitutes notice in regard to damages for patent infringement has evolved considerably over the years. Federal statutes have been interpreted to require varying degrees of notice in determining damages for patent infringement. 35 U.S.C. '287(a) limits damages and remedies available through the requirement of either constructive or actual notice. “The purpose of actual notice is met when the recipient is notified, with sufficient specificity, that the patent holder believes that the recipient is an infringer.” SRI Int'l v. Advanced Tech. Lab, Inc., 127 F.3d 1462, 1470 (Fed. Cir. 1997). Customarily, actual notice is achieved: 1) by sending the recipient a cease and desist letter identifying a patent and a specific activity believed to be infringing, along with a proposal to remedy the situation; or 2) by the filing of a complaint. However, recent rulings by the Court of Appeals for the Federal Circuit (“CAFC”) have accepted district court findings of actual notice (eg, to support determination that infringement was willful) based on a more expansive understanding of this term. Offers of, or requests for, licenses have been considered sufficient and actual notice has been found without specific knowledge of an infringement problem. In addition, actual notice has been found even when communications were made to someone other than the alleged infringer.
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
Use of Deferred Prosecution Agreements In White Collar Investigations
This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.
The DOJ's New Parameters for Evaluating Corporate Compliance Programs
The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.
CLE Shouldn't Be the Only Mandatory Training for Attorneys
Each stage of an attorney's career offers opportunities for a curriculum that addresses both the individual's and the firm's need to drive success.
Discovery of Claim Construction and Infringement Analysis May be Compelled Prior to a Markman Hearing
A defendant in a patent infringement suit may, during discovery and prior to a <i>Markman</i> hearing, compel the plaintiff to produce claim charts, claim constructions, and element-by-element infringement analyses.