1. Apropos of last week's post about the Samsung v. Apple amicus briefs, the IP Chat Channel is hosting a webinar next week on design patent damages. Here is a link, and here is the description:
Design Patent Damages: The Law As It Is Today2. The AIPLA 2016 Mid-Winter Institute ("Enforcing IP from Creation to Monetization and Litigation") runs from January 27-30 in La Quinta, California (link here). There is a plenary session on the International Trade Commission ("ITC—A Brave New World: Obtaining Exclusion Orders Enforcing Trademarks, Copyrights and Essential Patents") on Thursday, January 28, a session on border measures that same day, and a plenary session titled "Paying the Piper: Fee Shifting in IP Litigation Outside the U.S." on Saturday, January 30.
Thursday, January 28, 2016 2:00pm – 3:00pm ET
When the Federal Circuit last summer rejected a request for a rehearing en banc from Samsung on the damages awarded to Apple for infringement of three of its design patents, it reaffirmed what experts in design patents already knew: With design patents, the infringer’s damages are its entire profits from the article of manufacture. That formula stemmed from design patents’ has historically been used as a weapon in the fight against counterfeits and knock-offs. But the ruling in Apple v. Samsung, based on a straightforward reading of Section 289 of the Patent Act, was an eye opener even for many patent law veterans outside the design space. The Federal Circuit reiterated its stance again in September in Nordock v. Systems, when it remanded a patent design case because the lower court’s damages calculation shortchanged the plaintiff.
Our panel brings together two design-patent veterans with a damages expert to discuss the implications on design patent prosecution and litigation of the increased consciousness regarding design patent damages. Is this just a blip or will it lead to an increase in design patent litigation and prosecution, as some experts predict? How will courts define “the article of manufacture”? What are the limitations of design patent enforcement despite the possibility of 289 damages? The panelists will also consider Samsung’s certiorari petition to the U.S. Supreme Court.
Alan Cox, NERA Economic Consulting
Robert Katz, Banner & Witcoff
Damian Porcari, Ford Global Technologies LLC
3. The ABA-IPL 31st Annual Intellectual Property Law Conference is scheduled for April 6-8 in Bethesda, Maryland (link here). There is a session on Friday, April 8 titled High Octane Fee Shifting for Attorney Fee Awards, as well as a session earlier in the week on preliminary injunctions in trademark cases.