Texas

Federal Circuit Provides Important Guidance on Establishing Patent Venue

Order Granting Mandamus and Directing Transfer of Case, Raytheon Company v. Cray, Inc., Federal Circuit (September 21, 2017)

The Federal Circuit today clarified what it means to have “a regular and established place of business” to satisfy the venue requirement in patent litigation under 28 U.S.C. § 1400(b). As we previously reported here, on June 29, Judge Gilstrap denied transfer in this case and set out a four-factor test to consider in establishing venue in a particular district—including physical presence, defendant’s representations, benefits received, and targeted interactions. Defendant Cray, Inc. then petitioned for a writ of mandamus. READ MORE

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

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

Preventing Identity Theft—A Tale as Old as Time According to Judge Palermo When She Invalidated Patent Claims for Identity Theft Prevention Software Under § 101

Order Granting Summary Judgment in favor of Defendants, Mantissa Corp. v Ondot Systems, Inc., et al, S.D. Tex. (August 10, 2017) (Magistrate Judge Dena Palermo)

Litigants continue to use Alice and its progeny as a powerful tool to invalidate business method and software patents.  That’s what happened recently in Mantissa Corp. v. Ondot Systems, Inc., et al, when Magistrate Judge Palermo of the Southern District of Texas invalidated fifty-two claims asserted by a software company from two of its patents (U.S. Patent Nos. 7,779,456 and 8,353,027) covering a “method of protecting use of an entity’s identity, the method being executed on electronic computer hardware in combination with software,” i.e., identity protection software for banking cards.  In invalidating the claims under § 101, Judge Palermo relied heavily on comparisons to claims invalidated as abstract ideas in previous cases, including Alice, and ultimately found that the patent claims at issue covered merely a computer-implemented method of preventing identity theft—an idea that has “existed since the dawn of civilization.” READ MORE

Fictional, but Protectable: Court Nixes “The Krusty Krab” Restaurant on Trademark Grounds

Summary Judgment Order, Viacom International Inc. v. IJR Capital Investments, LLC, S.D. Tex. (January 11, 2017) (Judge Gray Miller) 

The Emmy nominations have been announced, and the fall television season is just weeks away. Accordingly, we thought it would be fun to revisit an interesting trademark ruling from earlier this year that still seems timely given these events.

With the rise of social media, mobile phone applications and viral marketing, cross-overs between the real world and the fictional world of T.V. shows, movies and video games, are becoming increasingly commonplace. To promote the upcoming season of its popular T.V. show Better Call Saul, for example, AMC created actual Los Pollos Hermanos fast-food restaurants in cities across the U.S.  Similarly, in the summer of 2006, ABC and the creators of Lost created an alternative reality game called The Lost Experience that included such disparate activities as advertisements of fictional companies on a variety of ABC programs and advertising sponsor websites, the publication under a pseudonym of a best-selling mystery novel called “Bad Twin,” a live disruption at San Diego’s Comic-Con by a fictional protagonist named Rachel Blake trying to unravel some of Lost’s mysteries, and the world-wide sale at special locations of fictional “Apollo” candy bars that had been featured in the show.  As these examples reflect, the names and likeliness of fictional locations, objects, and characters can represent significant and valuable components of a company’s intellectual property rights. READ MORE

Venue in the Eastern District of Texas Post-TC Heartland

Raytheon Company v. Cray, Inc., E.D. Tex. (June 29, 2017) (Judge Rodney Gilstrap)

On June 29, 2017, Judge Gilstrap of the Eastern District of Texas issued an opinion analyzing the factors to consider when determining whether, in the absence of “residence” in the district, a defendant “has committed acts of infringement and has a regular and established place of business” there for purposes of satisfying the venue statute.  This is an issue that the Federal Circuit has not touched since 1985, leaving litigants and courts to review numerous, not always consistent, regional court decisions.

This particular patent case concerns technologies allegedly incorporated into a Cray XC40 supercomputer installed at the University of Texas Austin’s campus (which is not in the Eastern District of Texas).  While this case has been pending since 2015, Cray had timely filed a motion to dismiss for improper venue early in the action. 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

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

Stay Pending IPRs Granted Subject to Defendants Agreement to Be Bound by Estoppel, Even Though IPR Proceedings Don’t Cover All Asserted Claims

Motion to Stay Pending Inter Partes Review Granted, Personal Web Techs. LLC et al. v. Google Inc. et al., 5:13-cv-01317 (Judge Edward Davila)

When third parties file petitions for inter partes review that cover some, but not all, of the Plaintiff’s asserted claims, should the court still stay the district court litigation? In at least one recent case brought by PersonalWeb Technologies against Google and YouTube, the answer was “yes,” so long as the Defendants agreed to be bound by the same estoppel conditions as would bind the
third parties.

READ MORE

Going Back to Cali? Federal Circuit Solidifies General Right To Transfer Out of ED Tex

Many technology companies here in Silicon Valley find themselves in the Eastern District of Texas – either as a plaintiff drawn to the district’s reputation as a plaintiff’s forum or as a less-willing defendant.  Motions to transfer are often the first motions filed in such cases since these companies often maintain the bulk of their operations outside of the Eastern District.  The Federal Circuit just issued a case on April 3, 2014, that sheds a little more light the Fifth Circuit’s test (which would be applied by Texas courts, amongst the other district courts in the Fifth Circuit) for determining whether a case should be transferred from the district in which it was filed to another. In re Toyota Motor Corporation, et al., Appeal No. 2014-113. This decision should facilitate transfer out of the Eastern District. READ MORE