Updates to the PTAB Trial Practice Guide Memorialize Current Practices While Leveling the Playing Field for Patent Owners
August 16, 2018 | Blog | By John Bauer, Vincent Ferraro
The Patent Trial and Appeal Board (PTAB) issued an August 2018 update to the American Invents Act Trial Practice Guide (the “Updated TPG”). The Updated TPG incorporates the PTAB’s current practices and provides further explanation of certain aspects of the PTAB’s standard practices to the public.
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.
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).
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.”
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.
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).
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.).
July 17, 2018 | Blog | By Aarti Shah, Andrew DeVoogd, Tiffany Knapp, 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.
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.
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.
June 19, 2018 | Blog | By William Geary, Linda Azrin
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.
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.
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.
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.
June 5, 2018 | Blog | By Andrew DeVoogd, Chris Duerden
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.
June 4, 2018 | Blog | By Andrew DeVoogd, Chris Duerden
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.
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.
May 31, 2018 | Blog | By Michael Newman, Patrick Driscoll
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.
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.
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.).
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