STRONGER Patents Act of 2017 Likely Too Heavy Lift for Congress

It may be late July, but the impending Congressional recess has not lessened potential interest by lawmakers in patent reform. On June 21, 2017, Sen. Christopher Coons (D-Delaware) introduced Senate Bill 1390, entitled the Support Technology and Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act of 2017. Sen. Tom Cotton (R- Arkansas), Sen. Richard Durbin (D- Illinois), and Sen. Mazie Hirono (D-Hawaii) cosponsored the bipartisan bill. The Bill’s stated purpose is “to strengthen the position of the United States as the world’s leading innovator by amending title 35, United States Code, to protect the property rights of the inventors that grow the country’s economy.” To accomplish this goal, the Senate Bill proposes to amend many of the patent law core concepts introduced by the America Invents Act of 2011 (AIA) and developed in the Courts in the past 20 years by, among other mechanisms, making patents more difficult to challenge in post-grant proceedings and overturning multiple Supreme Court decisions regarding injunctive relief and standards for induced infringement. The authors of the Bill, citing the fact that the U.S. Chamber of Congress in 2017 ranked the U.S. Patent System as being only the 10th strongest in the world after having ranked it first in every prior year, contend that unintended consequences of the AIA’s reforms and recent rulings from the Supreme Court have weakened the value of patents to such a degree that further legislative action is warranted. READ MORE

TC Heartland – One Month Later Delaware, Texas, California and Illinois Courts Most Popular Venues

We previously reported on the early impact of the Supreme Court’s decision in TC Heartland based on the first few weeks of new filings. (For a summary of the TC Heartland opinion and its implications, click here.) It has now been one month, and based on the filing data for the month since TC Heartland as well as historical data since the beginning of 2016, we now have a better sense of how things have changed and how things may look in the future. Using data obtained from Docket Navigator, we compared filings in the month since TC Heartland came down on May 22 with filings earlier this year and also for all of 2016. READ MORE

Patent Reviews Get Supreme Court Review

In a move that could have major implications for patent litigation in the Northern District of California as well as every other District, the U.S. Supreme Court has decided to take up the issue of whether inter partes reviews and certain other America Invents Act proceedings are unconstitutional because they can result in invalidation of a patent without a jury trial.  We invite you to read a full account, written by our colleague Don Daybell, on Orrick’s website here.

Determination on Indirect Infringement Requires Factual Record, Warranting Denial of Motion to Dismiss

Order Denying Motion to Dismiss, The Regents of the University of California v. Boston Scientific Corporation, Case No. 16-cv-06266-YGR (Judge Yvonne Gonzalez Rogers)

Ever since the abolition of form complaints in patent cases (see our previous reporting here, here, and here), patent defendants have been incentivized to file motions to dismiss, and many have succeeded. But as Judge Gonzalez Rogers’ recent Order in this case reminds us, even after Twombly and Iqbal, Rule 12(b)(6) still offers a relatively lenient pleading standard and, in many cases, requires development of a factual record before dismissal can be considered.  READ MORE

The Northern District of California Shoots to Second Place After TC Heartland

It’s been just over two weeks since the Supreme Court decision in TC Heartland.  (For a summary of the opinion and its implications, click here.)  As plaintiffs and the courts now struggle to deal with venue in patent cases (and patent litigators brush up on venue law), we looked at recent filings to see what effect the decision had on where patent complaints are being filed.  Using data obtained from Docket Navigator, we compared filings in the sixteen days since TC Heartland came down on May 22 with filings earlier this year between March 1-May 21.  READ MORE

A “Virtual” Home Is Not a Home: Court Sanctions Plaintiffs for “Reckless Disregard” in Deciding the Proper Forum for Their Litigation

Usually, one benefit of being a plaintiff is deciding in what forum to pursue litigation.  Generally, even a foreign-based plaintiff may pursue litigation in a U.S. forum where a defendant may be found or in which there is a substantial connection to the litigation.  There are, however, limits on a plaintiff’s choice of forum, and a recent decision in Tapgerine LLC v. 50Mango, Inc. demonstrates that pushing those limits may result in sanctions. READ MORE

Inadequate Disclosures Preclude Monetary Damages Recovery in Trademark Infringement Suit

Order Granting in Part and Denying in Part Defendant’s Motion for Summary Judgment, Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc., Case No. 3:15-cv-04618-WHO (Judge William H. Orrick)

As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted.  But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE

Foreign Party Cannot Hide Behind Hague Convention To Avoid Service

Order Re Service and Motion to Dismiss Re Service, Xilinx, Inc., v. Godo Kaisha IP Bridge 1, Case No. 3:17-cv-00509-JD (Judge James Donato)

It is not uncommon for parties to race to file competing patent suits in their preferred districts once negotiations break down and litigation appears necessary. In some cases, recognizing that federal courts generally give priority to cases which are the “first filed” and procedurally further along, a party may attempt to delay service of an opposing party’s complaint.  That was the apparent strategy of Japan-based Godo Kaisha IP Bridge 1 (“IPB”) in its patent dispute with San Jose-based Xilinx, Inc. (“Xilinx”).  But as IPB discovered, delay tactics do not always work. READ MORE

Uber’s Section 101 Motion to Dismiss Defeated by “Inventive” Ordered Combination

Order Denying Defendant’s Motion to Dismiss, X One, Inc. v. Uber Technologies, Inc., Case No. 16-CV-06050-LHK (Judge Lucy H. Koh)

Uber Technologies, the transportation network giant, recently lost a motion to dismiss a two-patent infringement suit when the Court found that Plaintiff X One, Inc.’s patent claims are directed to patentable subject matter under 35 U.S.C. § 101. The Court held that the individual claim elements are conventional, but as an ordered combination provide an inventive concept sufficient to defeat a motion to dismiss. READ MORE

Step Aside! Trade Secret Preemption of Other Claims

Order Granting in Part and Denying in Part Motion to Dismiss, Henry Schein, Inc. v. Cook, et al., 16-cv-03166-JST (Judge Jon Tigar)

One purpose of the California Uniform Trade Secrets Act (“CUTSA”) is to preempt and displace many common law causes of action that could arguably apply in a trade secrets case, such as conversion. Nevertheless, it is still common for plaintiffs in trade secrets cases to plead a great variety of causes of action. A recent decision from Judge Tigar helps clarify when such causes of action are preempted and when they can coexist with a cause of action for trade secret misappropriation. READ MORE