Monthly Archives: November 2011

Prior Commercial Use Defense

By Vincent J. Allen

The America Invents Act significantly expands the “prior commercial use” defense for patent infringement cases.  The defense allows a defendant to avoid patent infringement by proving that the defendant used the patented subject matter at least one year before the earlier of a) the effective filing date of the patent-in-suit or b) the date the invention was disclosed to the public as envisioned under the new Section 102(b).  The defense previously only applied to business methods, but now includes the entire gamut of patentable subject matter.

Need for Speed? – Think Prioritized Examination

By Bobby W. Braxton

If asked how quickly would you like obtain a patent, most inventors would reply “now.”  Unfortunately, due to a large back-log at the USPTO, applications often wait two or more years before they are even examined by an Examiner. The America Invents Act now provides for Prioritized Examination (“P.E.”), which can significantly reduce the wait.

AIA Rolls Out New “Virtual” Patent Marking Provision

By Zach W. Hilton

U.S. patent law has long required that patent owners and any licensees mark products they sell with the patent number of any patents covering such products in order to recover pre-suit damages resulting from infringement.  Until the passage of the America Invents Act (“AIA”), compliance with the patent marking statute required that a list of patents appear on a covered product itself, although it was sometimes sufficient to mark the product packaging.  In either case, compliance with the marking statute led to increased manufacturing costs as it was often necessary to retool product molds and/or redesign packaging as additional patents were deemed to cover a product or as patents expired.  The end result was that patent owners were placed at a competitive disadvantage.

New Joinder Rule May Curb Filings in Eastern District of Texas

By Vincent J. Allen

A few years ago, a plaintiff could file suit for patent infringement in any jurisdiction where infringing products were sold.  Because of its short time to trial and plaintiff-friendly jury pools, the Eastern District of Texas became the forum of choice for many plaintiffs.  But in recent years, the courts have clamped down on the liberal venue rules by requiring the transfer to a forum that is “clearly more convenient” in cases where the only connection to the venue is the fact that infringing products are sold there.

Willful Blindness: The New Standard for Knowledge

by Vincent J. Allen

In a decision earlier this year having ramifications in numerous areas of the law in which “knowledge” must be proven, the U.S. Supreme Court applied the doctrine of willful blindness to satisfy the knowledge element for a claim of active inducement of patent infringement. Although the willful blindness doctrine has been well established in criminal law and adopted by every federal court of appeals but one, the Global-Tech Appliances decision marks the first time the Court has approved the doctrine.