5 Must-Ask IP Due Diligence Questions in Corporate Transactions

Check box- IP InventoryWhen would a company undergo intellectual property due diligence?
Konstantin Linnik: Any corporate transaction involving IP assets necessitates diligence: merger, acquisition, IPO, investment (such as a venture capital financing), in-license, partnering, co-development, or distribution agreements. The buyer who is evaluating the Target could be a licensee, business partner, investor, banker, or underwriter. IP due diligence analyzes patent issues, trade secrets, trademarks, copyrights, freedom to operate, IP litigation, licensing, reps, warranties, disclosures, and even employment agreements. The process will examine the Target’s IP, such as how well the existing and potential IP protects the Target, what projected revenues will be based on the exclusivity period and geographic scope, and the current and projected expenses, including prosecution, maintenance, royalties, and enforcement. Because the diligence is expensive and is typically charged off as the overall transactional cost, the diligence is conducted as close to pre-closing as possible. Continue reading

The Supreme Court Chooses Quantity over Quality – Supplying a Single Component of a Multicomponent Invention Does Not Constitute an Infringing Act

On February 22, 2017, the U.S. Supreme Court addressed the issue of whether the supply of a single component of a multicomponent invention qualifies as an infringing act under 35 USC §271(f)(1) of the U.S. Patent Act. In its decision in Life Technologies Corp. v. Promega Corp., the Court found that “a single component does not constitute a substantial portion of the components that can give rise to liability under §271(f)(1).” In doing so, the Court overturned the Federal Circuit’s prior holding that a single component could be sufficiently important to the invention to meet the criteria for being a “substantial portion.” Continue reading

Zircore v. Straumann: A Method of Manufacturing a Physical Object Is Not an Abstract Idea

In Zircore, LLC v. Straumann Manufacturing, Inc. (E.D. Tex. 2017), as in many patent litigations since Mayo, Myriad, and Alice, the defendant moved to dismiss the infringement allegations contending that the patents in suit are ineligible subject matter under 35 USC § 101. Here, despite Straumann’s assertion that Zircore’s U.S. Patent No. 7,967,606 was invalid under § 101 as directed to an abstract idea, the court found that the claims were patent eligible under § 101 as directed to a method of manufacturing a physical object.

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Twombly and Iqbal Survive a Rampage

CMYK

The District of Massachusetts recently grappled with the proper analytical standard when faced with a Fed. R. Civ. P. 12(b)(6) motion to dismiss in a patent infringement case. Judge Burroughs held that the familiar Twombly/Iqbal framework applied.

In Rampage LLC v. Glob. Graphics SEI, No. 16-cv-10691-ADB, 2017 WL 239328 (D. Mass. Jan. 19, 2017), plaintiff Rampage brought three counts against Global Graphics and a John Doe:

  • Direct patent infringement (against John Doe);
  • Induced patent infringement (against Global Graphics); and
  • Contributory patent infringement (against Global Graphics).

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Phigenix v. ImmunoGen: IPR Challenger May Lack Standing to Appeal to Federal Circuit

The America Invents Act (AIA) established a number of procedures for challenging a granted patent at the Patent Trial and Appeal Board (PTAB). While virtually anyone can challenge a patent using these procedures, not everyone has standing to appeal if the challenge does not go their way.

This issue was highlighted recently in a precedential decision from the Federal Circuit. In Phigenix Inc. v. ImmunoGen, Inc. (Fed. Cir. Jan. 9, 2017), the Federal Circuit held that a petitioner-appellant from an inter partes review (IPR) proceeding lacked standing to appeal the PTAB’s final written decision in federal court. Continue reading

Trademark Solicitation Scams

Last month the United States Patent and Trademark Office (“the Office”) announced its cooperation in a Department of Justice investigation into a trademark scam perpetrated by two California men that defrauded about 4,446 people of $1.66 million. Trademark scams have been steadily on the rise over the past few years, which we have previously written about here. The current investigation resulted in the arrest of Artashes Darbinyan and Orbel Hakobyan, both of Glendale, CA, and their guilty pleas to charges of mail fraud and money laundering.

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UPDATE: BOSTON’S Founder and a Former Bandmate Still Seek Peace of Mind

Empty stage with band equipment

We have written previously about Scholz v. Goudreau, No. 13-CV-10951 (D. Mass.); the case recently went to trial on the parties’ surviving claims, and they are now immersed in post-trial briefing.

Tom Scholz and Barry Goudreau were once bandmates in BOSTON, and since Goudreau left the group in 1981, the two have occasionally litigated the trademark ramifications of his post-BOSTON career. The present dispute mostly arose from promotions tied to other musical acts and events that Goudreau was associated with.

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A Report on The World’s Most Innovative Universities Affirms Strengths of Massachusetts Universities and Others Around the World

Bachelor hat drawing with green bokeh background

As the recent U.S. Commerce Department survey affirmed (and discussed in our blog previously), intellectual property (IP) is a significant driver for our economy. Since universities are both key sources of IP and training grounds for many who work in the innovation economy, we note with interest a recent report on the world’s most innovative universities.

The Reuters 100: The World’s Most Innovative Universities – 2016 released a ranking of the world’s top 100 most innovative universities. The ranking is based on a number of factors, including the universities’ IP activities (e.g., patent application filing) and publication of academic journal articles.

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SCOTUS UPSETS THE APPLE CART?: The High Court Answers Key Question on Design Patent Damages, But Leaves Many Unanswered

The United States Supreme Court today overturned a $400 million verdict in a highly-publicized and long-waged patent battle between Apple and Samsung. Samsung Elcs. Co., Ltd. v. Apple Inc., 580 U.S. __ (Dec. 6, 2016). In doing so, it addressed design patents for the first time in 130 years and held that damages in design patent cases do not necessarily need to be based upon the profits made from a whole end product sold to a consumer, but may be limited to a component of that product. Nonetheless, the Court’s unanimous opinion, penned by Justice Sotomayor, may raise more questions than it answers.

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The District of Massachusetts Sheds Light on Halo’s New Standard for Willfulness and Enhanced Damages in Trustees of Boston University v. Everlight Electronics Co., Ltd.

Since the Supreme Court decision in Halo Electronics v. Pulse Electronics came down earlier this year (as previously discussed here), district courts across the country have been grappling with the high court’s new standard for determining willful infringement and awarding enhanced damages in patent cases. In the District of Massachusetts, only one case to date has interpreted this new standard, Trustees of Boston University v. Everlight Electronics Co., Ltd.

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