C.D. Cal.

Two Recent Decisions Highlight Divergent Extraterritorial Application of Lanham Act and Copyright Act

The question whether and under what circumstances the Lanham Act and the Copyright Act will be applied to conduct occurring at least partially outside the United States grows increasingly important as the world economy continues to globalize and many manufacturers seek to extend their franchises across borders. Two recent federal court decisions have addressed this issue, underscoring the somewhat anomalous differences in extraterritorial enforcement of trade dress and copyright laws, as well as the ability of plaintiffs to obtain injunctive relief with extraterritorial effect. READ MORE

Unwillingness of Plaintiff to Test Merits of Claims Tests Court’s Patience

Shipping and Transit, LLC v. Hall Enterprises, Inc., C.D. Cal. (July 5, 2017) (Judge Andrew J. Guilford)

Plaintiff Shipping & Transit, LLC (“S&T”) is a non-practicing entity that filed hundreds of patent lawsuits in 2016 alone, alleging infringement of three patents directed to monitoring and reporting the location of a vehicle. One of these patents was asserted in more than 400 cases, and the other two patents were asserted in more than 90 cases. However, S&T would routinely settle or dismiss a case with prejudice prior to a ruling on the merits where a defendant challenged the validity of the patents.

In this case, Defendant Hall Enterprises, Inc. asked S&T to voluntarily dismiss the case due to perceived patent validity issues. After S&T refused, Hall Enterprises moved for judgment on the pleadings arguing that all of the claims asserted against it were invalid under 35 U.S.C. § 101 due to ineligible subject matter. Only then did S&T move to dismiss its own claims with prejudice. 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

Use It or Lose It: Improper Venue

Order Denying Defendants’ Motion to Dismiss or Transfer Venue, Wordtech Systems Inc. v. Integrated Network Solutions, Corp., Case No. 2:04-cv-1971 (Judge Troy Nunley)

As you know, we generally report on decisions issuing from our beloved Northern District of California.  But this blog is committed to reporting on interesting cases from anywhere in the Northern California area.  So today we’re reporting on a fun patent case from Sacramento, which is actually north of San Francisco (but curiously in the Eastern District of California judicial district).  The order takes a look at whether there was proper venue, an issue that typically does not come up in patent disputes.  In an order that should shock no one, the court held that an 8 year (!) delay in moving to dismiss constituted waiver. READ MORE

See Ya! Motions to Transfer and Two Flavors of Judicial Experience

Order Granting Motion to Transfer Venue, Integrated Global Concepts, Inc. v. j2 Global, Inc. & Advanced Messaging Techs., Inc., Case No. C 12-cv-3434 (Judge Ronald Whyte)

Just in time for Wimbledon, Judge Whyte has “returned service” and backhanded one of his patent cases to Southern California, where it originated and where the original District Court had developed substantial experience with the underlying technology. Judge Whyte’s Order illustrates that not all “judicial experience” is alike, and that another district’s experience with relevant technical and scientific issues may carry particularly heavy weight in determining whether that venue is most appropriate for a case. READ MORE