Patent

Hatch Hints at Changes to Patent Law

A Look Forward on Patent Reform, Senator Orrin Hatch, October 2, 2017

Patent law reform legislation reminds us of a horror movie zombie:  it’s never truly dead.  A recent post from Utah Senator Orrin Hatch is the latest evidence that patents remain on Congress’s busy agenda.  Senator Hatch, who served on the Senate Judiciary Committee from 1993 to 2005 and currently chairs the Senate Republican High-Tech Task Force, recently explained which areas of patent law he believes are in most need of reform.  Because of his influence in the Senate, his remarks may indicate which areas of patent law Senate Republicans are considering altering. READ MORE

Joining an IPR Could Prevent Recovery Under § 285

Order Dismissing Case as Moot, MD Security Solutions LLC, v. Protection 1, Inc., M.D. Fl. (Sep. 26, 2017) (Judge Paul G. Byron)

There may be an unappreciated cost in pursuing a patent validity challenge at the PTAB rather than at the District Court. Litigants choosing the PTAB route may deprive themselves of the right to recover attorneys’ fees.

In MD Security Solutions LLC, v. Protection 1, Inc., plaintiff MD Security Solutions (“MD”) sued for patent infringement, and defendant Protection 1 counterclaimed for a declaratory judgment of non-infringement and invalidity. Shortly afterwards, a third party filed an IPR on the patents-in-suit, and Protection 1 joined the IPR. Given the IPR, the parties agreed to stay the case pending its resolution. The PTAB invalidated the asserted patent claims, and the patentee/plaintiff allowed that decision to become final by choosing not to appeal. Despite that, Protection 1 sought to keep the case alive by seeking attorneys’ fees under 35 U.S.C. § 285 from MD, whom Protection 1 deemed a “patent troll.” In part because the deadline to appeal had already expired by the time Protection 1 sought leave to take its discovery, the trial court had other ideas. READ MORE

Court Cites Risk of Competitive Misuse to Deny Modification of Protective Order

Order Denying Motion to Modify Protective Order, PhishMe, Inc., v. Wombat Security Technologies, D. Del. (September 18, 2017) (Judge Christopher J. Burke)

As demonstrated by Judge Burke’s order, courts are reluctant to alter protective orders that have been in place for months and were specifically negotiated in an effort to protect against inadvertent disclosure and competitive misuse of confidential information. This is especially true when the parties are direct competitors and have capable outside counsel to manage the litigation.

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District of Delaware “Clips”- Off Venue-Discovery for Medical Device Company but Allows It for Pharmaceutical Company

Boston Sci. Corp. v. Cook Grp., Inc., No. 15-980-LPS-CJB, 2017 U.S. Dist. LEXIS 146126, at *2 (D. Del. Sep. 11, 2017); Bristol-Myers Squibb Co. v. Mylan Pharm., Inc., No. 17-379-LPS, 2017 U.S. Dist. LEXIS 146372, at *3 (D. Del. Sep. 11, 2017)

In the wake of the Supreme Court’s TC Heartland decision, District of Delaware Chief Judge Stark recently decided two venue transfer motions in patent cases that may have far-ranging implications for future patent litigation in Delaware. In one case, he ordered further discovery on the appropriateness of venue in the other, given the past litigation conduct of the defendant. In the other, he transferred the case out of the district. These decisions may be especially important in Hatch-Waxman cases where generic drug companies lack a corporate presence in Delaware but previously have sought to challenge a patent under that statute. READ MORE

Look (at the PTAB Factors) Before You Leap Into Your Follow-On IPR Petition

Decision Denying Petitioner’s Requests For Rehearing, General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Nos. Case IPR2016-01357, 01358, 01359, 01360, 01361 (P.T.A.B. September 6, 2017) (expanded panel)

Last year, the Patent Trial and Appeal Board (“PTAB”) set out seven factors that could be considered in determining whether to grant or deny a subsequent petition for inter partes review (“IPR”) after denial of a previous petition—a so-called “follow-on” petition. Moving forward, IPR participants should pay close attention to how the PTAB applies these factors and whether it adds more.

In September 2015, General Plastic filed two IPR petitions challenging claims in Canon patents. The PTAB denied institution on the merits in March 2016 and subsequently denied General Plastic’s requests for rehearing. Then, in July 2016, General Plastic filed five subsequent petitions, again challenging claims of the same Canon patents. Again, the PTAB denied those petitions.

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E.D. Texas Magistrate Recommendations Highlight How Patent Marking Requirements Can Apply To Method Claims

Report And Recommendation on Motion for Partial Summary Judgment, Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. et al., E.D. Tex. (September 4, 2017) (Magistrate Judge Roy Payne)

Magistrate Judge Roy Payne’s recent Report and Recommendation in Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. shines a spotlight on potential inconsistencies in Fed. Cir. precedent regarding patent marking, and provides some valuable insight to plaintiffs and defendants who may be involved in litigation over a patent’s method claims. READ MORE

Orrick Antitrust Team Authors Article on Pivotal Decision Involving Worldwide FRAND Licenses

Our colleagues recently published a paper in e-Competitions discussing some of the dangerous implications of worldwide FRAND licenses and the UK High Court of Justice’s decision to enter an injunction in Unwired Planet v. Huawei.  Read the paper here.

Matthew G. Rose, Jay Jurata, Emily Luken, The UK High Court of Justice issues an injunction prohibiting an undertaking from selling wireless telecommunications products in Britain due to its failure to enter into a worldwide patent license (Unwired Planet / Huawei)7 June 2017e-Competitions Bulletin August 2017, Art. N° 84684

Alice Strikes Again: Patent for Biometric Identification and Verification System Invalidated as Directed to a “Well-Known” Idea “Humans Have Always Performed.”

Order Granting Motion to Dismiss, IQS US, Inc. et al. v. Calsoft Labs, Inc., et al., N.D. Ill. (August 18, 2017) (Judge Joan H. Lefkow)

Late last month, we reported on an Order from the Southern District of Texas invalidating identify theft prevention software under Alice as being directed to an abstract idea and lacking a sufficiently inventive concept.  There, Magistrate Judge Palermo found that the idea of preventing identity theft was an idea that has “existed since the dawn of civilization” and compared the claimed invention to the age-old practice of signature comparison and the more recent practice of identification cards.  In a similarly-reasoned order, Judge Lefkow of the Northern District of Illinois recently invalidated a patent for a biometric identification and verification system by finding that the patent claimed the idea of comparing known information about an individual to a second set of information for the purposes of confirming an individual’s identity—a “well-known concept that humans have always performed.” READ MORE

USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels)

The Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), revised the standard for finding a patent indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)).  In the wake of this decision, it was unclear whether the U.S. Patent and Trademark Office (PTO) would change its long-held standard for applying indefiniteness rejections during original patent application examination, based on Nautilus.  The PTO’s Patent Trial and Appeal Board (PTAB) recently issued a rare precedential decision, announcing that the PTO’s examination standard will not change. READ MORE

Details Matter: Two Courts’ Approaches to Personal Jurisdiction and Venue

Report & Recommendation to Deny Motion to Dismiss or Transfer, MyMail, Ltd. v. Yahoo!, Inc., E.D. Tex. (August 17, 2017) (Magistrate Judge Roy Payne)

Order Granting Motion to Dismiss, The Proctor & Gamble Company v. Ranir, LLC, S.D. Ohio (August 17, 2017) (Judge Timothy Black)

As we’ve been reporting, patent venue case law continues to develop on multiple fronts in the aftermath of the Supreme Court’s decision in TC Heartland.  In a pair of decisions discussed below, two jurisdictions—the Eastern District of Texas and the Southern District of Ohio—took contrasting approaches to how a defendant’s response to personal jurisdiction allegations affected the defendant’s ability to challenge venue. READ MORE