Injunction Constraints Impede Utility Patent Counterfeit Cases

Sterne Kessler Director Deirdre Wells spoke to Law360 on the recent federal judge ruling that Schedule A litigation tactics do not apply to utility patent cases reinforcing retailers relying on trademarks and design patents.

With the trend of judges more closely examining Schedule A cases, Wells explained, “I think it actually has less to do with the distinction between utility patents versus design [patents] or trademarks, and more perhaps about the judge that the case ends up in front of. We have seen a pretty big uptick in judges stepping in and saying, ‘Something doesn’t seem right here.’”

Wells also raised due process concerns for companies’ assets being frozen prior to finding out they’ve been sued, noting that temporary restraining orders can “go unchecked.”

Wells noted that the plaintiff’s request would have faced the same kind of scrutiny if the case involved trademarks.

“[Judge Barker] does cabin it in utility patents because that’s what the facts were in front of him,” Wells said. “But I wouldn’t necessarily take from this that he would have been OK with it if it was a different type of IP.”