Intellectual Property

Viewpoints

Filter by:

Google’s servers housed by a third-party ISP qualify as a regular and established place of business to establish proper venue in the Eastern District of Texas

August 15, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci

In our continued post-TC Heartland coverage, Judge Gilstrap in the Eastern District of Texas recently held that venue was proper because Google exercises exclusive control over physical servers implicated by the litigation, as well as the physical space within which the server is located and maintained.
Read more

Lessons about Prosecution History Estoppel and Design Patents from Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co.

August 3, 2018 | Blog | By Christina Sperry

Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims.  Examples include claim amendments and statements made by the applicant during prosecution in papers filed with the U.S. Patent and Trademark Office (USPTO).
Read more

Improper Venue for Web-Based Company in light of In re Cray

August 2, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci

In our continuing post-TC Heartland coverage, the District of Nevada recently identified a key factor in analyzing venue challenges in patent litigation: whether the public can access the defendant corporation or its services in the respective forum.
Read more

Patent Specification Drafting Considerations Highlighted by TF3 Limited v. TRE Milano, LLC

August 2, 2018 | Blog | By Christina Sperry

Is there any possible danger in using the abbreviation “i.e.” in the specification of a U.S. patent application?  The Federal Circuit’s recent decision in TF3 Limited v. TRE Milano, LLC shows that the answer is “yes.” 
Read more

When Public Use Qualifies for the Experimental Use Exception to 35 U.S.C. § 102(b)

July 24, 2018 | Blog | By Marc Morley, Melissa Brayman

Some inventions require testing before they are ready for patenting, and sometimes that testing requires use by the public. A recent decision from the Federal Circuit provides additional guidance on what activities qualify for the experimental use exception to the public use bar of 35 U.S.C. § 102(b).
Read more
Viewpoint Thumbnail

The U.S. Trademark Office Adopts New Rule Requiring Appointment of U.S. Counsel to Represent a Non-US Domiciliary in Trademark Matters

July 18, 2018 | Blog | By Susan Neuberger Weller, F. Jason Far-hadian

Effective August 3, 2019, the United States Patent and Trademark Office (USPTO) will require foreign entity applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States or its territories to be represented by qualified U.S. counsel (i.e., an attorney who is an active member of a state bar in the U.S.).
Read more

Recent ITC decision clarifies and eases domestic industry burden for patent holders

July 17, 2018 | Blog | By Andrew DeVoogd, Matthew Galica

A recent decision by the International Trade Commission (“ITC” or the “Commission”) improves intellectual property holders’ ability to prove that they have a “domestic industry” and obtain relief for infringement from the Commission. 
Read more

Understanding Priority Claims for U.S. Patent Applications: Part 1

July 11, 2018 | Blog | By Christina Sperry, Elissa Kingsland

This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications.  Part 1 is a general overview of how to make a proper priority claim, without addressing how to correct an improper priority claim, which will be examined in Part 2.
Read more

The Patent Act Allows for Full Compensation for All Forms of Infringement

June 22, 2018 | Blog | By Michael Renaud, James Wodarski, Sandra Badin

Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components of the patented invention exported from the United States.
Read more

10 Millionth U.S. Patent Issues Today

June 19, 2018 | Blog | By William Geary

Further to our previous blog post, the U.S. Patent and Trademark Office reported that the 10 millionth patent issued today with the new patent cover design.
Read more

Is a “necessary distributor” enough to qualify as a regular and established place of business for purposes of satisfying proper venue?

June 15, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci

According to the Eastern District of Texas, no. In our continued post-TC Heartland coverage, for the purpose of establishing venue, courts typically will decline to treat the place of business of one corporation as the place of the business of the other, even when the two are related, so long as a formal separation of entities is preserved.
Read more
Intellectual Property Viewpoints Thumbnail

Discovery Concerning Potential Litigation Funding is Not Relevant or Proportional

June 14, 2018 | Blog | By Michael Renaud, Andrew DeVoogd, Catherine Xu

A recent order from the Northern District of California provides some succinct guidance on the relevancy of discovery concerning litigation funding. In Space Data Corp. v. Google LLC, 5-16-cv-03260, the court denied Defendants Google and Alphabet’s motion to compel discovery as to potential litigation funding allegedly considered by Plaintiff Space Data.
Read more

Can retrieving materials from a storage unit qualify as engaging in business activity for purposes of establishing proper patent venue?

June 12, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci

According to a recent decision from the Southern District of New York, no.  In our continued post-TC Heartland coverage, the court in CDX Diagnostic, Inc. v. U.S. Endoscopy Group, Inc. clarified that a storage unit does not qualify as a regular and established place of business.
Read more

Evidence of Bad Faith Patent Prosecution Can Support an Award of Attorney Fees

June 5, 2018 | Blog | By Andrew DeVoogd

A recent opinion from the District of New Jersey is a cautionary tale for patent practitioners regarding conduct during patent prosecution that can be framed as bad faith. This can become an expensive misstep during subsequent litigation. 
Read more

Insincere Licensing Discussions Can Support a Willful Infringement Claim

June 4, 2018 | Blog | By Andrew DeVoogd

A recent order from the Northern District of California provides patent practitioners interesting guidance regarding conduct during licensing discussions—and may be a cautionary tale to potential licensors engaged in efficient infringement.
Read more

Patent Venue Is Proper Where a Parent Company Defendant “Ratifies” Its Non-Party Subsidiary’s Regular Place of Business in the Forum District

May 31, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci

In another interesting development in our ongoing coverage of the application of the TC Heartland patent venue standard by lower courts, the District Court for the Western District of Texas recently determined that when a parent company ratifies its subsidiary company’s place of business, it can be considered a “regular place of business” for purposes of establishing proper venue.
Read more

Smartphone Wars – The Last Jury: Samsung Owes $539M for Infringing Apple’s Patents

May 31, 2018 | Blog | By Michael Newman

A California jury recently awarded Apple $538.6 million in total damages for patent infringement by Samsung. This is the latest development in the patent battle between smartphone industry titans that began in 2011 and took another step towards completion.
Read more

Federal Circuit Holds Federal Circuit Law Applies to Patent Venue Challenges and Places Burden on Plaintiffs to Establish Venue

May 29, 2018 | Blog | By Peter Cuomo, Joe Rutkowski

On May 14, 2018, the United States Court of Appeals for the Federal Circuit, In re: ZTE (USA) Inc., No. 2018-113, held that Federal circuit law governs the burden of proof for venue challenges under 28 U.S.C. § 1400(b) and that the burden of proof rests on the plaintiff to demonstrate proper venue upon a defendant’s motion to dismiss for lack of venue.
Read more

Federal Circuit clarifies that patent venue is proper only in a single judicial district within a multi-district state

May 23, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci

In our continuing coverage of the post-TC Heartland landscape, the Federal Circuit recently clarified that venue is proper in only one district per state in In re BigCommerce, Inc., 2018-122 (Fed. Cir. May 15, 2018) (slip op.).
Read more

Willfulness Finding in EDTX Ruling in TCL v. Ericsson Illustrates the Risk to Accused Infringers of Failing to Investigate Allegations

May 17, 2018 | Blog | By Michael Renaud, Andrew DeVoogd, Daniel Weinger, Robert Moore

In a May 10, 2018 ruling, discussed earlier on this blog, Magistrate Judge Payne affirmed the jury’s willfulness finding largely on the ground that TCL did not proffer any evidence that it held a subjective, good faith belief that it did not infringe the patent-in-suit or that the patent was invalid.
Read more

Subscribe

Sign up to receive email updates from Mintz.
Subscribe Now
Mintz_Monetization_PDF_blog_button

Infographic: Comprehensive Approach to Patent Monetization

Patent Transactions Promo Button

Focus on Patent Transactions

International Comparative Legal Guides 2022 Chapter 27

International Comparative Legal Guide – Patent

Chapter 27

Viewpoint Editors

Explore Other Viewpoints:

I'm Looking For...