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Making the Sausage: Lower Courts Grapple With the Supreme Court’s TC Heartland Venue Decision

September 27, 2017 | Blog | By Andrew DeVoogd, Anthony Faillaci

The United States Supreme Court decided earlier this year that a 1957 opinion is still valid and still limits venue choices for patent infringement actions under 28 U.S.C. § 1400.
The Federal Circuit yesterday issued an opinion in In re: Smith Int’l, Inc., No. 2016-2303 (Fed. Cir. Sept. 26, 2017) reversing an affirmance by the Patent Trial and Appeal Board of the rejection of several claims of U.S. Patent No. 6,732,817 being challenged in ex parte reexamination.

Building a Health App? Part 2: Protecting Your Intellectual Property

September 26, 2017 | Blog | By Christina Sperry

This post is the second in a series of weekly blog posts covering legal issues for consideration during the early stages of development of a health app and providing best practices to help guide you through a successful launch.
The Defend Trade Secrets Acts (DTSA) provides an important tool for any company possessing trade secrets to bring a suit in federal court to remedy and prevent dissemination of a misappropriated trade secret.

Federal Circuit Clarifies Venue Requirement Post-TC Heartland by Granting Mandamus Relief in In re Cray

September 25, 2017 | Blog | By Peter Snell, Daniel Weinger, Anthony Faillaci

Late last week, the Federal Circuit granted a writ of mandamus in In re Cray, 2017-129 (Fed. Cir. Sept. 21, 2017), overturning Judge Gilstrap’s four-factor test for determining whether a defendant possesses “a regular and established place of business” in a district such that the defendant could be sued for patent infringement in that district.

Calculating Patent Term Adjustment: Part 2

September 21, 2017 | Blog | By Christina Sperry, Elissa Kingsland

This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications.  While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this article addresses how the filing of various papers during prosecution can affect PTA.
On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme Court’s Nautilus standard.
After an eight-year battle through the Federal Courts, the fight over attorneys’ fees in Octane Fitness v. ICON Health & Fitness has likely reached its end with the Federal Circuit upholding the hotly disputed $1.6 million award to Defendant Octane Fitness.
The decision in U.S. International Trade Commission (ITC) investigation Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012 (“1012 Investigation”), is still confidential, but the ITC has issued a notice stating that ALJ Shaw has ruled in favor of patentee Fujifilm against Sony and recommended that an exclusion order be issued.
Last week, the Federal Circuit held computer memory system patent claims not abstract and thus patent-eligible under Section 101, reversing a lower court dismissal of the case under Rule 12(b)(6).

District Courts Remain Split on TC Heartland and Waiver of Improper Venue Defense

August 21, 2017 | Blog | By Brad M Scheller, Tiffany Knapp

The Supreme Court’s decision five months ago in TC Heartland v. Kraft Food Group Brands was a sea change in the way courts interpret venue for patent infringement cases.

DTSA and Ex Parte Seizure – Lessons from the First Ex Parte Seizure Under The DTSA

August 21, 2017 | Blog | By Michael Renaud, Nick Armington

The Defend Trade Secrets Act (DTSA) Ex Parte Seizure mechanism allows victims of trade secret misappropriation to quickly prevent further dissemination of confidential information by asking a court to direct federal marshals to seize stolen trade secret material and secure that material during the pendency of a formal DTSA case.

Federal Circuit Says PTO Submissions Can Waive Privilege to Future Communications

August 15, 2017 | Blog | By Jim Cleary, Paul Brockland

On July 20, 2017, the United States Court of Appeals for the Federal Circuit in In re OptumInsight denied OptumInsight’s petition for writ of mandamus on privilege waiver.

ITC Denies Suspension or Temporary Rescission of Remedial Orders After PTAB Invalidates Patents at Issue

July 28, 2017 | Blog | By Michael Renaud, Aarti Shah, Patrick Driscoll, Tiffany Knapp

In a first of its kind decision with important ramifications for patentees, the U.S. International Trade Commission (“ITC”) denied a petition to suspend or temporarily rescind remedial orders issued in Investigation No. 337-TA-945 pending appeal of the Patent Trial and Appeal Board’s (“PTAB”) separate finding that the patent claims at issue are invalid.
On July 17, 2017, the United States Court of Appeals for the Federal Circuit reversed, in a precedential opinion in Millennium Pharmaceuticals, Inc. v. Sandoz, Inc., No. 2015-2066 (Fed. Cir. July 17, 2017), a district court ruling that claims of a patent directed to the Velcade® cancer treatment drug compound were invalid as obvious.
On June 19, 2017, the U.S. Patent and Trademark Office (USPTO) announced that it would be extending the Cancer Immunotherapy Pilot Program, which permits patent applications pertaining to cancer immunotherapy to be examined in an expedited fashion.
In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant review.
On May 17, 2017, the International Trade Commission (ITC) reversed an ALJ’s ruling and found a violation of Section 337 in Certain Air Mattress Systems, Components Thereof and Methods of using the Same (“Certain Air Mattress Systems”), Inv. No. 337-TA-971, due to the importation of certain air mattresses, and components of air mattresses, by the named respondents.

Calculating Patent Term Adjustment: Part 1

June 22, 2017 | Blog | By Christina Sperry, Elissa Kingsland

This article is first in a series focusing on various issues related to Patent Term Adjustment. Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect patent term adjustment that will be examined in future articles.

Supreme Court to Decide the Constitutionality of Inter Partes Review

June 22, 2017 | Blog | By Michael Renaud, Andrew DeVoogd, Chris Duerden

In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question whether the inter partes review (IPR) process violates the U.S. Constitution by “extinguishing private property rights through a non-Article III forum without a jury.”
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