Judge Gilstrap Issues Venue-Based Dismissal Based on Recent Federal Circuit Precedent

Decision Granting Dismissal of Complaint for Improper Venue, Uniloc USA, Inc. et al. v. Nutanix, Inc., Case No. 2:17-cv-00174, E.D. Tex. (December 6, 2017) (Judge Rodney Gilstrap)

On the heels of the Federal Circuit’s reversal of the Court’s decision in Cray (reported here), on Wednesday, Judge Gilstrap dismissed a different patent suit for improper venue even where Defendant’s employees lived and worked in the Eastern District of Texas.  The decision confirms that for purposes of venue, an employee’s residence, by itself, does not constitute the employer’s residence too.  Instead, courts must look at several factors beyond the mere location of employees when assessing corporate “place of business.” READ MORE

Federal Circuit Clarifies Burden For Proving Failure to Mark

Arctic Cat Inc. v. Bombardier Recreational Products, Inc. et al., Fed. Cir. (December 7, 2017)

On Friday, the Federal Circuit decided Arctic Cat Inc. v. Bombardier Recreational Products, Inc. and clarified the burden of proof for the failure to mark defense. Under 35 U.S.C. § 287, a patentee’s pre-suit damages can be limited if the patentee (or its licensee) didn’t mark previously sold “patented articles.” Parties often dispute whether an unmarked product is a “patented article” that actually practices the claim limitations of a patent. The Arctic Cat decision holds that once the alleged infringer identifies the unmarked products, it becomes the patentee’s burden to prove that those unmarked products aren’t “patented articles.” READ MORE

Counterclaims and Affirmative Defenses: A Tale of Two Pleadings

Order re Defendant’s Second Motion to Dismiss & Strike Affirmative Defense, Summers Manufacturing Co., Inc., v. Tri County AG, LLC, et al.: 4:17-cv-00186-RGE-CFB (November 29, 2017) (S.D. Iowa, Judge Rebecca Ebinger)

In patent cases, it is not uncommon for a defendant to file boilerplate counterclaims asking for declaratory judgments of non-infringement and invalidity. Such counterclaims are typically accompanied by a list of affirmative defenses that includes non-infringement and invalidity. A recent opinion in Summers v. Tri County shows the perils of pleading counterclaims in a conclusory manner. It also explains the important differences between counterclaims and affirmative defenses. The lessons of the opinion can help both plaintiffs and defendants avoid needless pleading-stage motion practice. READ MORE

PTAB “Clarifies” Procedures for Motions to Amend

On November 21, 2017, the PTAB released its “Guidance on Motions to Amend in view of Aqua Products.”  This guidance states that a Patent Owner’s motion to amend now only has to meet the requirements of 35 U.S.C. §316(d), and of 37 C.F.R. §42.121 (IPR) or 37 C.F.R. §42.221 (PGR/CBM), in order to be considered.  It further states that the burden of persuasion as to patentability of substitute claims is no longer on the Patent Owner.

The guidance provides that the Board will consider all of the evidence in the record, and that if that evidence is in equipoise, then the Board will grant the motion and enter the amended claims into the patent (i.e., the burden of persuasion now lies with the Petitioner).  It also says that Patent Owners have a duty under Rule 42.11 to disclose to the Board all information material to patentability of substitute claims. READ MORE

Reading The Tea Leaves: Concurrences Likely Coming In Oil States And SAS

Oil States and SAS Institute appear likely to continue the Supreme Court’s practice of resolving patent cases with relatively brief unanimous (or largely unanimous) opinions that are accompanied by concurrence opinions expressing specific points. The Supreme Court started its December session with these two patent cases, and has another nine cases to hear this week. Although it is always an uncertain business to predict outcomes from attending oral arguments, the view in the post-argument hallway was that the Supreme Court would maintain the status quo. READ MORE

IPRs at the Supreme Court: Argument Insights and What’s Next From Orrick’s Mark Davies

Join Law.com IP reporter Scott Graham and Orrick, Herrington & Sutcliffe partner Mark Davies on a conference call for day-after analysis of Supreme Court arguments in Oil States and SAS Institute, two cases that could reshape inter partes review proceedings or wipe them out altogether.  Scott and Mark will share their takeaways from inside the chamber, answer your questions, and discuss strategies for litigating patents until the clouds clear.

This conference call (9 AM PST/ 12 PM EST, Tuesday November 28) is free.  Please register here.

Mark Davies leads Orrick’s Patent Appeal Working Group and is D.C. head of the firm’s Supreme Court and Appellate practice.  He represents clients in appeals that include Patent Trial and Appeal Board decisions and is the author of Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit (Matthew Bender 2018).

When Does a Work-at-Home Employee’s Residence Become the Employer’s Place of Business for Patent Suits?

Memorandum Opinion and Order Granting Motion to Dismiss for Improper Venue, BillingNetwork Patent, Inc. v. Modernizing Medicine, Inc.,
N.D. Ill. (November 6, 2017) (Judge Ruben Castillo)

We previously reported here about the Federal Circuit’s guidance in In re Cray, Inc. on what is a “regular and established place of business” for purposes of establishing venue over a corporation in patent infringement actions under 28 U.S.C. § 1400(b).  Venue is proper only if the corporation has a “physical place in the district” that is “a regular and established place of business,” and is also “the place of the defendant.”  A recent opinion from the Northern District of Illinois applies that guidance to address whether venue lies in a state where a company: (1) is registered to do business as a foreign corporation; (2) has a registered agent for service of process; and (3) maintains several work-at-home employees. Chief Judge Ruben Castillo concludes that, under In re Cray, Inc., these facts are insufficient to establish venue. READ MORE

All-or-Nothing Damages Strategy Leads to No Damages Despite Admission of Patent Infringement

Promega Corp. v. Life Technologies Corp., Fed. Cir. (November 13, 2017)

The Federal Circuit affirmed a Wisconsin district court’s decision to overturn the $52 million award a jury awarded to Promega Corporation (“Promega”) in its patent suit against Life Technologies Corp. (“Life”).  The Federal Circuit also upheld the district court’s decision denying Promega’s request for a new trial on damages.  For the Federal Circuit, there was to be no second bite at the apple:  at trial, Promega pursued an all-or-nothing damages calculation strategy that improperly assessed damages based on worldwide infringement, and accordingly it had waived its right to prove damages based on infringement that occurred only in the United States.


Reversed! Failure to Assert Robust Nonobviousness Arguments During IPR Led to Reversal By The Federal Circuit

Owens Corning v. Fast Felt Corporation, Fed. Cir. (October 11, 2017)

During inter partes review proceedings, the Patent Trial and Appeal Board (“PTAB”) is required to give claims their broadest reasonable construction in light of the specification.  See 37 C.F.R. § 42.100(b).  Thus, when the PTAB imports claim limitations based on the invention’s preferred embodiments, its decision upholding patent validity may be subject to reversal.  In situations where a broader construction is argued by the petitioner and adopted in the Institution Decision, and the patent owner does not provide suitable arguments for nonobviousness in light of that broader construction, the Federal Circuit may choose to reverse rather than remand. READ MORE