Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent decision on a motion to dismiss by Judge Gilstrap out of the Eastern District of Texas held that a company’s policy or practice of directing its personnel not to read patents can support a finding of willful infringement. In 2011, the U.S. Supreme Court, in Global-Tech v. SEB, held that willful blindness was an alternative basis to establish knowledge of a patent for purposes of inducement of patent infringement. Here, Judge Gilstrap ruled that willful blindness by having a policy or practice of directing its personnel not to read patents can constitute willful blindness sufficient to meet the knowledge of the patent prong needed for willful infringement. This is a significant decision for companies that may have such policies. Notably, Judge Alan Albright in the Western District of Texas ruled in the VLSI v. Intel case a few weeks earlier that a policy of prohibiting employees from reading patents other than those of the company did not meet the standard for willful blindness. Thus, there is a split of authority within popular district courts in Texas on this issue.

2. The House of Representatives passed the Copyright Alternative in Small -Claims Enforcement Act of 2019 by a vote of 410-6. This bill now heads to the Senate. The text of the bill is here. The highlights of the bill are that: it is voluntary; the claims that may be brought include copyright infringement claims, declaratory relief of no infringement, and misrepresentations of copyright ownership under 17 U.S.C. 512(f); the amount in controversy must be less than $30,000; 3-judge panels will decide matters; and no attorneys’ fees awards, except for bad faith. While this may be a useful alternative to copyright infringement litigation for matters without large damages potentially available, it seems a bit like the Patent Trial and Appeal Board, but for copyright claims. If so, plaintiffs beware. It may not be a friendly forum.

3. Eastern District of California Chief Judge Lawrence J. O’Neill wrote a letter to the White House and the two sitting California senators begging for help with the heavy caseload that his court has been dealing with for some time. The letter warns of an imminent catastrophe if the judicial vacancies on the court are not filled. The catastrophe involves the inability to try many civil cases, and a dismissal of a number of criminal cases because they are taking too long. Speaking from experience, this is a very real and serious situation. The author has had litigation in the Eastern District of California court for some time, and it is very slow. The author does not hold the court responsible in light of the heavy caseload that the active judges on the court carry. Under the current circumstances, however, plaintiffs seeking expeditious hearing of their cases should avoid this court, if possible. On the other hand, defendants who desire a slow process may want to file in this court. This may present a rare opportunity for bipartisan agreement on judicial appointments because the need is so significant.