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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.
As described above, 35 U.S.C. '287(a) requires either constructive notice, achieved by appropriately marking a product with the patent number, or actual notice. Sufficiency of notice is a question of fact that will be overturned by the CAFC only when clearly erroneous. If there is no constructive notice, the patentee may recover damages only for infringement after actual notice. Actual notice triggers an affirmative duty of care to determine whether one's actions may constitute a genuine patent infringement, while constructive notice does not. Imonex Servs., Inc. v. W. H. Muzprufer Dietmar Trenner GmbH, 2005 U.S. App. LEXIS 9334, *5 (Fed. Cir. 2005). If the patent is willfully infringed, the court has the option of increasing actual damages by as much as three times. Furthermore, 35 U.S.C. '285 allows an award of attorneys' fees for “exceptional cases” and courts have determined that willful infringement satisfies the exceptional case rule. See Imonex Servs., Inc., 2005 U.S. App. LEXIS 9334. Whether infringement has been willful is determined based on the totality of the circumstances, including actions of the alleged infringer after receiving actual notice (eg, obtaining opinions of counsel). See Read Corp. v. Portec, Inc., 970 F.2d 816, 826-827 (Fed. Cir. 1992).
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Stranger to the Deed Rule
In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.