Skip to main content

Intellectual Property

Viewpoints

Filter by:

Not just for crypto – How blockchain technology will affect medical devices

September 4, 2018 | Blog | By Lisa Adams, Linda Azrin, Derek Constantine

Most people are familiar with blockchain technology because of its use in cryptocurrency, but its use is going to be far more widespread than just as a ledger for digital currency. 

A Sales Agent’s Home Office May Qualify as a Regular and Established Place of Business

August 20, 2018 | Blog | By Andrew DeVoogd, Daniel Weinger, Anthony Faillaci

In our continued post-TC Heartland coverage, the Southern District of New York recently held that an employee’s home office in New York constituted a “regular and established place of business” in the state as required by the patent venue statute, 28 U.S.C. § 1400(b).
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. 
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.
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).
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.” 

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.

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).

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

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. 

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.

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.

10 Millionth U.S. Patent Issues Today

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.
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.

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.
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.

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

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. 

Insincere Licensing Discussions Can Support a Willful Infringement Claim

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.

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

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

Explore Other Viewpoints: