Intellectual Property Protection

Anthony Ostlund Protects Client’s Patented Invention from Infringement by Competitor

A San Francisco jury unanimously found that JF Microtechnology infringed Johnstech’s patent under the doctrine of equivalents

“Many businesses depend on intellectual property to protect their innovations from unfair competition.  Absent clear proof to the contrary, companies should expect their issued patents are enforceable and that competitors will respect those patents.” - Courtland Merrill 

Client Issue

Anthony Ostlund client Johnstech International Corp. discovered that a direct competitor, JF Microtechnology, was selling a lower-priced replacement for Johnstech’s patented device used to test computer chips.  Johnstech filed suit against JF Microtechnology for infringement of its patent in U.S. District Court for the Northern District of California.

JF Microtechnology denied infringing Johnstech’s patent, arguing that its device used a slightly different structure than the invention described in Johnstech’s patent.  Before trial, the district court found that JF Microtechnology’s competing device did not literally infringe Johnstech’s patent.  However, evidence showed that JF Microtechnology’s device performed substantially the same function, in substantially the same way, and successfully worked with customers as a drop in replacement for Johnstech’s patented device.

The Anthony Ostlund Approach

At trial, Johnstech pursued JF Microtechnology for infringement under the doctrine of equivalents.  The doctrine of equivalents prevents an accused infringer from avoiding liability for infringement by changing only minor or insubstantial details of a claimed invention while retaining the invention’s essential identity. 

Results Achieved

On September 27, 2016, a San Francisco jury unanimously found that JF Microtechnology infringed Johnstech’s patent under the doctrine of equivalents, found that infringement was willful, rejected JF Microtechnology’s invalidity defense, and awarded Johnstech $636,807 lost profits as damages.  As a result of the verdict, JF Microtechnology is subject to additional supplemental liability for damages caused by additional infringing sales made after the period of time included in the verdict.

Final judgment is pending, and subject to an appeal.  However, as a result of the jury’s finding of willful infringement, Johnstech will ask the court to triple the amount of damages awarded, award Johnstech all of its attorneys’ fees and legal expenses, and permanently enjoin further infringement.

The case is Johnstech Int’l Corp. v. JF Microtechnology Sbn Bhd., No. 14-cv-02864 JD (N.D. Cal. filed 6/20/14).