Tony is an Associate in the firm’s Boston office. He has worked with a wide range of technologies including manufacturing, telecommunications, and software development.

Tony’s experience includes assisting in the preparation of patent applications and pre-suit diligence, including patent portfolio analysis; drafting infringement/non-infringement and validity/invalidity analyses; and providing technical and scientific advice to legal practitioners in ITC-337 investigations and US District Court matters. During law school, Tony served as the production editor of the Journal of Health & Biomedical Law.

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.  See TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. ___ (2017) (citing Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 226 (1957)).  In its extensively-covered TC Heartland decision issued in May, the Court held that “[a]s applied to domestic corporations, ‘reside[nce]’ in § 1400(b) refers only to the State of incorporation,” where the accused infringer has a “regular and established place of business” in the venue. While framed as merely confirmation of precedent from the 1950s, many practitioners and commentators viewed this decision as a dramatic change in the patent litigation landscape.

Since TC Heartland came down, lower courts have applied the new paradigm in differing ways.  As trends have developed in recent months, we thought it useful to provide a sampling of the various approaches to venue issues post-TC Heartland.  These issues include, for example, whether defendants who did not contest venue prior to the TC Heartland decision waived the defense of improper venue because the case was—or was not—an “intervening change” in the law, and how to assess whether a defendant has regular and established place of business in a particular venue.

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

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.  In re Cray provides useful guidance because it is the first time since the Supreme Court’s TC Heartland decision that the Federal Circuit has weighed in on what constitutes a “regular and established place of business.”  The patent venue statute, 28 U.S.C. § 1400(b), provides that venue is proper in a patent infringement lawsuit only where the defendant (1) resides or (2) has “committed acts of infringement and has a regular and established place of business.”  TC Heartland clarified that a defendant “resides” only in the state in which it is incorporated.  It did not address the second prong, however, which is an alternative way of establishing venue.  More frequently patent owners are looking to the second prong to determine the locus of an appropriate venue now that the first prong of the statute has been interpreted narrowly.

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

Pharmaceuticals_LabOn April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court’s judgment of infringement and summary judgment for non-infringement of The Medicines Company’s (“MedCo”) patents-in-suit.  See The Medicines Company v. Mylan, Inc., 2015-1113 (Fed. Cir. 2017).  The patents-in-suit were U.S. Patent Nos. 7,582,727 (“the ’727 Patent) and 7,598,343 (“the ’343 Patent”).  MedCo initiated a suit against Mylan, Inc. (“Mylan”) in response to Mylan submitting an Abbreviated New Drug Application (“ANDA”).  Through submitting an ANDA request, Mylan wished to obtain approval from the Food and Drug Administration (“FDA”) for a generic drug that would directly compete against MedCo’s ANGIOMAX® product.  To counter Mylan’s ANDA request, and keep their product exclusive, MedCo filed suit alleging that Mylan’s ANDA drug infringed claims in both the ’727 and ’343 Patents.

The district court held on summary judgment that Mylan’s drug did not satisfy the “efficient mixing” limitation of the ’343 Patent; however, following a 6-day bench trial found that Mylan’s drug did infringe the ’727 Patent because the asserted claims did not include an “efficient mixing” limitation.  Mylan argued on appeal that the district court erred by not including the “efficient mixing” limitation as part of the “batches” limitation in the ’727 Patent.

Continue Reading Federal Circuit Limits Claim to Single Embodiment Because Only Enabling Description Provided in the Patent

In ClassCo, Inc. v. Apple, Inc. the Federal Circuit upheld a decision from the Patent Trial and Appeal Board (“the Board”), which invalidated several claims of ClassCo’s US Patent No. 6,970,695 (“the ’695 patent”) that discussed caller ID technology that would verbally announce the name of an incoming caller before the call is connected.  The ’695 patent has been asserted in litigation against Apple, Samsung, LG, HTC America, Hewlett-Packard, Palm, Inc., Nokia, and ZTE Corp., in both the Northern District of Illinois, and another suit in the District of Massachusetts, respectively.  Apple filed an Inter Partes Review (“IPR”) against the ’695 patent, whereby the Board found the ’695 patent obvious in view of two prior art references, the Fujioka and Gulick patents.

Continue Reading ClassCo, Inc. v. Apple, Inc.: A Reminder Of Obviousness Analysis Under KSR

Bruno Mars RecordOne living member and the estates of the 1980s funk group, Collage, have filed suit against musicians Mark Ronson and Bruno Mars claiming the duo copied the bass line, guitar riff, and various other elements of Collage’s 1980s work “Young Girls.”  This lawsuit comes on the heels of last year’s controversial verdict out of the Central District of California where a jury found that Pharrell Williams and Robin Thicke’s “Blurred Lines” copied key elements from Marvin Gaye’s “Got to Give It Up.”

See Mintz Levin’s Trademark & Copyright Matters blog for our full write-up on the “Uptown Funk” case and how the “Blurred Line” decision may impact it.

Patent Agent PrivilegeSeveral recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.

As previously reported at Global IP Matters, the Federal Circuit held in March in In re Queen’s University at Kingston that communications between patent agents and their clients regarding patent prosecution matters are privileged and should be shielded from discovery in subsequent litigation regarding the patents.

Continue Reading Patent-Agent Privilege and the USPTO’s Proposed New Rule