Tag Archives: patent
New York Office
On the one year anniversary of Osterberg LLC, I’m pleased to announce the opening of a New York office at 112 West 34th Street, 18th Floor, New York, NY 10120.
The Latest From the Federal Circuit on Injunctions, Sunset Royalties, and Future Royalty Rates
Even if you win your patent infringement case, you still may not get an injunction prohibiting ongoing infringement. In a case decided last month by the Federal Circuit, ActiveVideo v. Verizon, a jury found that Verizon infringed ActiveVideo’s method patents pertaining to video-on-demand technology, but the Federal Circuit held that the district court erred by […]
IP Licensing Checklist
Here is a general checklist of things to consider when licensing IP, in no particular order. If you spot any significant omissions, please comment. 1) What precisely is being licensed? 2) What will be the term of the license? a) any automatic renewal? b) options? c) fee changes in subsequent license periods? d) termination rights? […]
The Practical Difference Between Contributory Infringement and Inducing Infringement in Patent Cases
The Federal Circuit’s recent decision in Toshiba v. Imation highlights a key difference between the concept of contributory infringement and inducement of infringement in patent cases. It is that an accused infringer may escape liability for contributory infringement if his product is capable of “substantial non-infringing use”, but if the accused infringer encourages infringing use, […]
The Damaged are Welcome; the Merely Annoyed are Unwelcome in Federal Court
Two recently-decided cases brought by Apple illustrate the necessity of identifying real harm to one’s business before filing a lawsuit in federal court.
Copyright (and Patent) Misuse – It’s Narrower Than You Think
The copyright misuse doctrine does not prohibit a copyright owner from requiring that licensees use the copyrighted work only on it own products. It only prohibits the copyright owner from imposing conditions that prohibit the licensee from making competing products. That is one of the rulings in the recent Ninth Circuit case of Apple v. […]
Taming The E-Discovery Beast
The Federal Circuit’s proposed Model Order on E-Discovery offers a number of good suggestions that should help reduce the burden of electronic discovery in patent cases, and some that merit further consideration and debate. Among the best ideas are the following three: 1. Requiring separate requests for email, rather than permitting email to be included […]
