Third Time’s a Charm on § 101

Order Granting Defendant’s Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 101, Cave Consulting Group, Inc., v. Truven Health Analytics Inc., et al. N.D. Cal (December 15, 2017) (Judge Susan Illston)

Truven’s persistence on its § 101 arguments has finally paid off.  After separately denying a motion to dismiss and a motion for summary judgment – both on § 101 grounds (discussed here) – Judge Illston granted Truven’s renewed motion for summary judgment that the asserted claims were unpatentable. READ MORE

Out of Time? Federal Circuit Reverses Course on Review of PTAB Time-Bar Determinations

En Banc Decision Remanding to Panel for Consideration of Merits of Petitioner’s Time-Bar Appeal, Fed. Cir. (January 8, 2018)

The Federal Circuit, sitting en banc, found that the decision of the Patent Trial and Appeal Board (“PTAB”) as to whether a petition for inter partes review (“IPR”) is barred as untimely may indeed be appealed.  Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 8, 2018) (en banc).  This overrules the panel in Achates Reference Publishing Inc. v. Apple Inc., 803 F. 3d 652 (Fed. Cir. 2015). READ MORE

Court Reconsiders and Grants Motion to Transfer for Improper Venue in Light of TC Heartland

Stuebing Automatic Machine Company v. Allan Gavronsky d/b/a Matamoros Machine Shop, et al., S.D. Ohio (June 12, 2017) (Judge Karen L. Litkovitz) 

Under 28 U.S.C. § 1400(b), venue is only proper in a patent infringement suit in a jurisdiction (1) where the defendant resides, or (2) where the defendant has committed acts of infringement and has a regular and established place of business. The Supreme Court’s decision in TC Heartland focused on the first test, holding that a defendant “resides” only in its state of incorporation, not that personal jurisdiction over the defendant exists, as the Federal Circuit previously held. That narrowing of the first test put renewed focus on the second test, in particular whether a defendant maintained a “regular and established place of business.” In the wake of TC Heartland, Judge Karen L. Litkovitz granted the defendants’ motion to transfer six months after she initially denied it. READ MORE

University Waives Eleventh Amendment Sovereign Immunity by Enforcing Patent Rights

The Regents of the University of Minnesota (“Patent Owner”) sued Ericsson Inc. and Telfonaktiebolaget LM Ericsson (collectively, the “Petitioners”) in district court for patent infringement.  When the Petitioners sought inter partes review (“IPR”) to challenge the asserted patents, the Patent Owner moved to dismiss the IPR proceedings arguing that it is a State entity with sovereign immunity under the Eleventh Amendment.  An expanded panel[1] of the Patent Trial and Appeal Board (“PTAB”) held that the Patent Owner waived its sovereign immunity by filing an action in federal court alleging infringement of the challenged patents. READ MORE

Could the Physical Presence of a Party’s Affiliate Make Patent Venue Proper?

Mallinckrodt IP et al. v. B. Braun Medical, C.A. Nos. 17-365-LPS, 17-660-LPS (D. Del. Dec. 14, 2017 Memorandum Order Requiring Venue Discovery).

In this patent infringement action, defendant B. Braun moved to dismiss the action for improper venue, arguing that venue is improper under TC Heartland and In re Cray because B. Braun does not reside in Delaware and does not have a regular and established place of business in Delaware. In response, plaintiff Mallinckrodt argued that that the places of business of any B. Braun entity, including B. Braun affiliates, subsidiaries, or alter egos, may be attributable to B. Braun for venue purposes. READ MORE

Federal Circuit Makes Way for FUCT, Striking Down the Statutory Bar on Immoral or Scandalous Trademark Registrations as Unconstitutional

Orrick has published a client alert titled, “Federal Circuit Makes Way for FUCT, Striking Down the Statutory Bar on Immoral or Scandalous Trademark Registrations as Unconstitutional,” discussing the recent U.S. Court of Appeals for the Federal Circuit decision involving the Lanham Act’s ban on  registering immoral or scandalous trademarks as unconstitutional on First Amendment grounds. Read the full alert here.

“[L]ess-than-vigorous effort” Not Sufficient to Avoid Order Granting Attorneys’ Fees

Order Granting Defendant’s Motion for Attorneys’ Fees, Opal Run LLC, v. C&A Marketing, Inc., E.D. Tex. (November 29, 2017) (Magistrate Judge Roy S. Payne)

By now, courts have made clear that patent owners thinking about filing suit must carefully investigate their claims prior to filing suit and must litigate fully, or else face a potential order granting attorneys’ fees to the other side. But some plaintiffs, including the one in Opal Run, seem to still have not gotten that memo. READ MORE

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