Tag: Nicholas Peterka

New Shareholders Announced

Posted on by Kinney & Lange, P.A.

Kinney & Lange is pleased to announce three new shareholders: Ian MacKinnon, Nicholas Peterka, and Andrew Swanson.

Ian MacKinnon has extensive experience in IP portfolio management. He has assisted clients with monetizing their IP portfolios through licensing and sales activities. Ian has also participated in enforcement activities and providing IP litigation support.

Nick Peterka’s practice has been primarily in patent preparation and prosecution, as well as clearance activities. Such clearance activities include performing offensive activities, such as patentability searches and analyses as well as defensive activities, such as freedom-to-operate searches and analyses.  Nick also has extensive experience in Trademark prosecution and registration.

Andrew Swanson has extensive experience managing large patent portfolios for various clients of Kinney & Lange. In addition to client management, Andrew’s practice includes patent preparation and prosecution, as well as clearance activities. Please welcome Kinney’s three new shareholders.

Supreme Court Clarifies Standard of Review for Claim Construction

Posted on by Kinney & Lange, P.A.

■ Nicholas J. Peterka

In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. ___, No. 13-854 (2015), the Supreme Court held that the Federal Circuit must apply the clearly erroneous standard when reviewing a district court’s resolution of subsidiary factual matters made during the court’s patent claim construction.

At dispute was the meaning of the term “molecular weight.” Each party presented extrinsic evidence in the form of expert testimony and, relying on patent owner Teva’s expert, the district court determined that “molecular weight” was not indefinite. Sandoz appealed the claim construction to the Federal Circuit, which reviewed de novo all aspects of the district court’s claim construction and determined that “molecular weight” was indefinite. The Supreme Court granted certiorari and found that, while the determination of questions of law (such as the final claim construction) are reviewed de novo, underlying determinations of subsidiary facts are reviewed for clear error. The Court stated that subsidiary factual matters arise when the court uses extrinsic evidence, such as expert testimony, to aid in claim construction. The Court’s holding will factor into whether a party uses extrinsic evidence, for a party aiming to add more finality to a district court’s claim construction may frame the issues so that extrinsic evidence is vital to the court’s claim construction and, conversely, a party seeking to overturn a claim construction may argue that intrinsic evidence is dispositive and extrinsic evidence is unnecessary. This decision will also affect summary judgment. Because the Court’s holding seemingly elevates the importance of factual determinations in claim construction, factual issues may become potential obstacles to summary judgment, which requires no genuine dispute as to any material fact.

 

FTC REACHES SETTLEMENT WITH MPHJ

Posted on by Kinney & Lange, P.A.

■ Nicholas J. Peterka

On November 6, the Federal Trade Commission and MPHJ Technology Investments LLC agreed to settle FTC charges alleging MPHJ used deceptive practices and phony legal threats. The settlement prevents MPHJ and its law firm, Farney Daniels, P.C., from making deceptive representations when asserting its patent rights, with further deceptive conduct bringing with it a penalty of up to $16,000 per misrepresentation.

The settlement comes on the heels of a September ruling by the U.S. District Court for the Eastern District of Texas to dismiss a suit filed by MPHJ against the FTC. The suit, which was filed in January 2014, was an attempt to stop the FTC’s investigation into MPHJ for allegedly sending deceptive demand letters to potential infringers.

The FTC is investigating deceptive representations from patent assertion

MPHJ owns at least five patents related to networked computer scanning programs, also known as “scan-to-email” programs, which it acquired in 2012. Since then, MPHJ has sent at least 16,000 demand letters to potential infringers, mostly small businesses, threatening litigation if the potential infringers did not sign license agreements and pay licensing fees. This caused several state attorneys general to investigate and file actions against MPHJ under their consumer protection laws, alleging that statements made by MPHJ in the demand letters were false.

The FTC, the agency tasked with investigating and policing unfair or deceptive acts or practices affecting interstate commerce, began its own investigation into MPHJ last year. The FTC alleged that the demand letters sent by MPHJ stated that MPHJ would take imminent patent infringement litigation against any potential infringer when MPHJ did not intend to take action and did not take such action. Further, the FTC alleged that MPHJ falsely represented that substantial numbers of businesses have responded to MPHJ’s demand letters by purchasing licenses when, at the time of at least some of the representations, MPHJ had not sold any licenses to potential infringers. As part of this investigation, the FTC sent MPHJ a draft complaint it intended to file if a settlement between the FTC and MPHJ was not reached, but the FTC had not initiated any legal action at the time MPHJ filed suit.

In its suit, MPHJ asserted that the FTC investigation was in violation of MPHJ’s First Amendment rights. The suit alleged that the FTC unlawfully interfered with MPHJ’s lawful, proper, and constitutionally protected efforts to identify and seek redress for infringement of its patents. MPHJ asserted that the FTC violated MPHJ’s First Amendment right to petition the government for redress under the Noerr-Pennington doctrine and its First Amendment right to free speech. In dismissing the case, District Judge Walter Smith found that MPHJ’s suit lacked subject matter jurisdiction and was an attempt by MPHJ to derail the not-yet-completed FTC administrative process.

This settlement is the first time the FTC has taken action under its consumer protection authority against an alleged “patent troll”.