Third-Party Litigation Financing: When Can a Defendant Follow the Dollar Signs?

Order Denying Discovery Regarding Litigation Financing, Space Data Corp. v Google LLC, N.D. Cal. (June 11, 2018) (Magistrate Judge Nathanael M. Cousins)

In recent years, third-party litigation financing has become increasingly common.  Funding by an outside investor in exchange for a stake in any recovery has raised questions about the ethics of this practice as well as about whether such information must be disclosed in the litigation.  With the exception of class actions, courts often have concluded that information about actual or potential litigation funding is immune from disclosure under the attorney work product doctrine or common interest privilege.

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Turning the Looking Glass at the Alice Inquiry

Orders Denying Petition for Rehearing En Banc, Aatrix Software, Inc. v. Green Shades Software, Inc., Fed. Cir. (May 31, 2018); Berkheimer v. HP Inc., Fed. Cir. (May 31, 2018)

Last week, the Federal Circuit denied petitions for rehearing en banc in two separate cases:  Berkheimer v. HP, Inc. and Aatrix Software, Inc. v. Green Shades Software, Inc.  Both cases involved the question of whether an invention was patent-eligible under 35 U.S.C. § 101.  That is, in Berkheimer a digital file archiving idea and, in Aatrix, a data manipulation idea.  In the prior panel decisions, the Federal Circuit had determined that there were factual questions regarding patent eligibility in both cases, reversing the district court’s grant of judgment on the pleadings in each instance.  Although the denials for rehearing en banc were made in per curiam orders, what is unusual and noteworthy is that they were accompanied by concurring and dissenting opinions that dealt squarely with the question of how properly to analyze patentability under 35 U.S.C. § 101.  READ MORE

Labrador, Labrado, Labradont – Patent for Method for Genotyping Labrador Retrievers Found Invalid

Order Granting Motion for Judgment of Law, Genetic Veterinary Sciences, Inc. d/b/a Paw Prints Genetics v. LABOklin GmbH & Co. KG et al., (E.D. Va. May 14, 2018) (Judge Henry Coke Morgan Jr.)

Imagine this: You’re enjoying a nice day out with your Labrador Retriever when you notice his little puppy nose looks a bit dry and crusty. As days pass, the symptoms worsen and your pup develops a dry, rough, gray-to-brown crustiness on the tip of his nose. A trip to the veterinarian’s office leaves you with bad news, your puppy has Hereditary Nasal Parakeratosis (HPNK), a genetic defect caused by a mutation in a gene that regulates differentiation of nose skin cells. This specific mutation was identified by defendants who developed a corresponding method for genotyping Labrador Retrievers – the subject of U.S. Patent No. 9,157,114 (“the ‘114 patent”). Specifically, the ‘114 patent teaches an in vitro method for genotyping Labrador Retrievers in order to discover whether the Labrador Retriever might be a genetic carrier of the disease HNPK. READ MORE

ITC’s Amended Section 337 Rules Streamline Investigations

Orrick’s Jordan Coyle and Diana Szego Fassbender co-authored an article for Law360 on the U.S. International Trade Commission’s long-awaited final amendments to its Rules of Practice and Procedure pertaining to investigations under Section 337 of the Tariff Act. The amended rules are designed to reduce the costs and burdens associated with Section 337 investigations for parties, third parties and the commission. Jordan and Diana describe the most significant amendments to the rules, comment on the circumstances surrounding some of the amendments and offer practice tips.

Read the full article here.

Potential Issues for “Not Yet Practicing” PTAB Petitioners: Constitutional Requirements for Appealing PTAB Decisions

Order Reversing-In-Part, Vacating-In-Part, and Remanding, Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc., Appeal No. 2017-1487 (Fed. Cir. May 2, 2018) (Judge Evan J. Wallach)

Occasionally, a company may file a proceeding before the Patent Trial and Appeal Board (the “PTAB”), not with respect to its current use and practice of the contested patent, but for its potential future practice of the patent.  For example, a company may seek inter partes review (“IPR”) of a patent it does not use or infringe upon, purely for the purpose of clearing a pathway to use the patented technology several years down the line, before spending substantial resources to develop a product using that technology.   READ MORE

Federal Circuit Law Governs Venues in Patent-Infringement Suits, and Plaintiffs Bear the Burden to Establish Proper Venue

Order Granting Mandamus, In re: ZTE (USA) Inc., Fed. Cir. (May 14, 2018) (Judge Richard Linn)

In a rare grant of a mandamus petition, the Federal Circuit made two key holdings related to venue in patent cases in the wake of TC Heartland: (1) Federal Circuit law, not regional circuit law, governs patent-litigation venue; and (2) plaintiffs bear the burden to show proper venue. The court called these “basic” and “undecided” issues and found “exceptional circumstances” to grant the petition, vacating the district court’s denial of a motion to dismiss and remanding the case for application of the proper standard. This precedential order sets a nationwide rule in patent cases on which courts had been divided. READ MORE

The Music Modernization Act: Congress Poised to Pass Legislation Updating Music Copyright Royalties for the Digital Age

On April 25, 2018, the House of Representatives unanimously passed H. R. 5447, otherwise known as the “Music Modernization Act” (MMA). The bill, which now awaits Senate action, amends the Copyright Act in multiple ways, most notably by changing the way online music services pay royalties. In its current form, the MMA comprises three parts. READ MORE

Use It or Lose It: Assert All Prior Art References During IPR

ZitoVault, LLC v. International Business Machines Corporation and Softlayer Technologies, Inc., N.D. Texas (April 4, 2018)

The defendants in this case chose not to assert all relevant prior art patents and printed publications during an IPR (in order to increase their likelihood of joinder with an instituted IPR) and were subsequently precluded from asserting that prior art in defense to an infringement action in the Northern District of Texas. This case serves as a reminder that parties should perform a careful review of prior art patents and printed publications prior to filing or joining an IPR lest they lose their right to assert crucial prior art. READ MORE

Basket Weaves and Racing Stripes: Tensions in Defining the Scope of Protection in “Nontraditional” Trademarks in the U.S.

Steve Madden, Ltd., vs. Jasmin Larian, LLC, 1:18-cv-02043 (SDNY)

Early this spring, fashion company Steve Madden filed an action for declaratory judgment in a trademark dispute with up-and-coming designer, Jasmin Larian, responding to a series of cease and desist letters in which the latter accused Steve Madden of copying its handbags.[1] Steve Madden sought declaratory judgment that Jasmin Larian’s bag was a generic handbag ubiquitous in the handbag market, and thus not entitled to protection under the Lanham Act. Steve Madden’s allegations hinged on the claims that the Jasmin Larian handbag at issue – the Cult Gaia Ark bag – “slavishly copies the traditional bamboo picnic bag design (‘Traditional Japanese Design’) from the 1940s.” READ MORE