Virginia IP Law : Virginia Intellectual Property Lawyer & Attorney : Troutman Sanders Law Firm : Technology & Patent Litigation

As we posted here and here, the case of TecSec v. IBM et al., Case No. 1:10CV115 (E.D.Va.), pending before Judge Brinkema, is one of the most complex patents suits ever filed in the Eastern District of Virginia. TecSec asserted 11 patents involving 380 claims against thirteen unrelated groups of defendants. To gain control over this massive suit, Judge Brinkema stayed the litigation as to all defendants except IBM.

Judge Brinkema is now working her way through the parties’ summary judgment motions. In an opinion (found here) issued January 12 on a first-round of motions, Judge Brinkema denied IBM’s motion for summary judgment of inequitable conduct but allowed the inequitable conduct claim to proceed to trial.   TecSec, Inc. v. IBM, 2011 U.S. Dist. LEXIS 3116 (E.D. Va. Jan. 12, 2011).

IBM asserted inequitable conduct based on the patentee’s failure to disclose the role of a former TecSec employee, Roy Follendore, in inventing the methods contained in one family of the patents at issue. Follendore was one of the pioneering developers of the technology at issue and had been awarded a patent on a closely related invention. TecSec, however, did not specifically disclose the Follendore patent to the PTO, even though the Follendore patent contained claim language that was, in the Court’s words, “strikingly similar” to the claims of the patents in suit. Moreover, the same attorneys prosecuted both the Follendore patent and the patents in suit.

The patents in suit, however, specifically referenced the Follendore patent in their specification and there was other evidence of a lack of materiality and intent to deceive. For those reasons, Judge Brinkema held that IBM had not met its burden of proving inequitable conduct by clear and convincing evidence but allowed the claim to proceed to trial.

IBM also moved for summary judgment of invalidity of two patents due to anticipation and lack of adequate written description as to one of those patents. Judge Brinkema not only denied IBM’s motion but held that TecSec was entitled to summary judgment on IBM’s written description defense and judgment that the cited prior art references did not invalidate those two patents. IBM recently moved for reconsideration of the invalidity decision (brief in support found here) on the grounds that TecSec did not seek summary judgment that the prior art references were not anticipating and on the grounds that the Court did not apply the proper standard. A hearing on the reconsideration motion is scheduled for February 4. 

Finally, the parties recently filed a second round of cross-summary judgment motions. A hearing on those motions is set for February 11. 

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The Supreme Court has scheduled argument in the case of Global-Tech Appliances Inc. v. SEB S.A. for February 23, and, coincidentally, we published an article last week in BNA’s Patent, Trademark and Copyright Journal (found here), analyzing the issues the Court will address and predicting that the Court will overturn the Federal Circuit’s holding that inducement of patent infringement requires only “deliberate indifference” to the existence of a patent.

For background on the Federal Circuit’s decision and the Supreme Court’s decision to grant cert see our earlier blog posts here and here. A few of the highlights of our BNA article are:

• Global-Tech raises an issue of justiciability which could allow the Supreme Court to avoid the merits and simply remand the case for a trial on damages for direct infringement.
   
• The Court is likely to approach Global-Tech as a straightforward case of statutory interpretation, much as it did in KSR and Bilski.  Thus, the Court will strictly construe the statutory language and give little weight to Federal Circuit authority that is not firmly grounded in the statute or Supreme Court precedent.
   
• Because the Federal Circuit did not derive its “deliberate indifference” standard from the language of 35 U.S.C. § 271(b) or Supreme Court precedent, the Federal Circuit’s standard is probably doomed.
   
• Even if it reverses the Federal Circuit, the Court is not likely to simply adopt the standard of “purposeful, culpable expression and conduct” proposed in the Question Presented.
   
• The Supreme Court is also not likely to adopt a standard of intent that is lower than set forth in the Federal Circuit’s earlier en banc decision in DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (en banc).
   
• The factors that support the conclusion that the Court will require knowledge of a patent for inducement liability also support the conclusion that such knowledge must be actual knowledge.
   
• An actual knowledge standard will reduce damage awards but it will not allow indirect infringers to escape liability for injunctive relief or damages once notice is given.
   
• An actual knowledge standard will make marking under 35 U.S.C. § 287(a) more important and will raise numerous questions about the nature and quality of evidence sufficient to show actual knowledge for later cases to decide.

For all the details, click here for the full article.

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The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia relating to an intellectual property law issue or the practice of intellectual property law. The winner receives a cash prize of $4,000. The judge of the final round of the competitor is the Honorable Richard Linn, judge of the U.S. Court of Appeals for the Federal Circuit. The deadline for submissions is Friday, May 27, 2011 at 4:00 EDT.

Attached are a complete set of rules (here) and a flyer for use in advertising the competition (here). Additional information is available at the section's website: www.vsb.org/site/sections/intellectualproperty/view/writing-competition/.

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