In the latest installment of their Law360 series on recent noteworthy Federal Circuit decisions, Knobbe Martens partners Jeremiah Helm and Sean Murray offer insights into the court’s ruling in Epic Tech LLC v. Pen-Tech Associates Inc. The dispute, which centered on a patent directed to an electronic sweepstakes system and networking technology, addressed how related patents within a patent family can affect patent infringement litigation, including pre-suit investigations and potential attorneys’ fees.
“Patents often come in families, and different patents in a series are often referred to as relatives,” write Helm and Murray. “Epic provides a cautionary tale to patentees not to ignore a patent’s relatives when either bringing, or maintaining, a litigation.”
The authors discuss the origin of the dispute between Epic Tech and Pen-Tech, in which Epic filed a patent infringement lawsuit against Pen-Tech involving U.S. Patent No. 8,545,317. While the ‘317 patent was granted pre-Alice, several of the patent’s post-Alice relatives were subsequently invalidated under Section 101’s patent-eligibility requirements. Sharing key takeaways for patent owners and litigators from the decision, Helm and Murray write, “A patentee cannot ignore post-Alice developments and rely on the presumption of validity when asserting a patent.” Further, they maintain, the ruling provides “a clear warning that family members are both fair game and potentially relevant when it comes to determining both the adequacy of the presuit investigation and whether to maintain an ongoing patent infringement litigation.”
Read the full Law360 article, “The Patent Circuit: Minding Patents’ Family Histories,” here.
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