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Wiley Rein’s James Wallace and Brian Pandya Discuss Key Patent Cases for 2014

Bloomberg BNA
January 24, 2014

James H. Wallace , Jr., chair of Wiley Rein’s Patent Group, and Brian H. Pandya, a partner in the firm’s Intellectual Property and Litigation practices, were quoted in a January 21 Bloomberg BNA article about the outlook for several key patent law developments in 2014.  Mr. Wallace and Mr. Pandya opined on a number of issues:

The Supreme Court of the United States will review issues related to divided infringement—in which more than one party performs the steps of a patented method—in Akamai Technologies v. Limelight Networks, according to the article.  “It is likely that the Court will hold that there must be one entity or persons under its control performing all the acts necessary for infringement to support an induced infringement charge,” Mr. Wallace told Bloomberg BNA.  “The Court may be tempted to say that proper claim construction can solve the problem, although we know that is easier in hindsight and may not be practical at the time of filing for a patent.”

Also pending before the Supreme Court is the question of whether U.S. patent law applies to conduct that occurs abroad, in Maersk Drilling USA v. Transocean Offshore Deepwater Drilling.  The Court has invited the U.S. Solicitor General (SG) to file an amicus brief in the case.  “For at least 150 years, the Supreme Court appears to have consistently refused to find infringement for acts not explicitly covered by the statute where at least part of the challenged conduct is performed outside the United States,” Mr. Wallace said.  “Accordingly, I predict that the SG will support the petition and suggest no liability.”

Mr. Pandya commented on whether the Supreme Court’s overturning, in Broadcom v. U.S. District Court for the Eastern District of Texas, a Fifth Circuit standard on transferring patent cases to comply with forum-selection clauses in technology licenses will impact future patent cases filed in the Eastern District of Texas.  “The Eastern District may no longer be the busiest patent litigation venue in the nation, but I don't see the Broadcom case itself having a long-term impact on the district,” said Mr. Pandya, a former clerk for the Honorable Leonard Davis, who is now chief judge of the Eastern District.

Mr. Pandya also discussed the long-term impact of the Federal Circuit’s 2013 ruling in Commil v. Cisco that an accused infringer’s belief that a patent is invalid may negate the required showing of specific intent to encourage infringement.  “This is a tricky issue, because you don’t want to turn inducement into willfulness,” he said.  He added that “it probably makes sense that if you have a good faith belief that a patent is invalid, you can’t then be intending to cause its infringement.”

For more information, please contact James H. Wallace, Jr. at 202.719.7240 or jwallace@wileyrein.com, or Brian H. Pandya at 202.719.7457 or bpandya@wileyrein.com.