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Matthew Hurley is a Member in the firm and is based in the Boston office, where he focuses primarily on representing life sciences companies in disputes involving collaboration agreements, patent licenses, supplier agreements, and distribution contracts. As the Section Manager for the firm’s Intellectual Property Practice, Matt manages more than 115 attorneys and Technology Specialists. He has successfully represented life sciences clients in litigation over research, development, commercialization, licensing, royalties, and distribution. He also represents companies in patent, trademark, copyright, and other IP disputes, and counsels clients on ways to avoid litigation.

Earlier this week, the United States Patent and Trademark Office (“USPTO”) published a new rule governing when privilege exists for communications between clients and their domestic or foreign patent attorneys and patent agents before the Patent Trial and Appeal Board (“PTAB”).   For context, the originally proposed amendment sought to resolve ambiguity as to when privilege extends to USPTO patent practitioners during PTAB discovery proceedings in light of prior Federal Circuit, District Court and PTAB decisions.  The now-published rule codifies the PTAB’s intent to protect communications between patent agents and clients from discovery, stating that:

“communication[s] between a client and a USPTO patent practitioner or a foreign patent practitioner that is reasonably necessary and incident to the scope of the patent practitioner’s authority shall receive the same protections of privilege under Federal law as if that communication were between a client and an attorney authorized to practice in the United States, including all limitations and exceptions[;]”

“USPTO patent practitioners and foreign jurisdiction patent practitioners shall receive the same treatment as attorneys on all issues affecting privilege or waiver, such as communications with employees or assistants of the practitioner and communications between multiple practitioners.”

Continue Reading USPTO Publishes New Rule Governing Privilege for Patent Attorneys and Agents

The U.S. Supreme Court announced its ruling in TC Heartland v. Kraft Foods Group Brands LLC on May 22, 2017, a patent infringement case that has garnered national attention for its implications on venue. This case originated with a motion to transfer an action filed in the District of Delaware to the Southern District of Indiana, where the Defendant accused of patent infringement is headquartered. However, the national attention has focused on the possibility that a significant amount of other patent litigation may now shift to the District of Delaware. The U.S. Supreme Court granted certiorari at the end of last year and heard oral arguments in March to address the question of “where proper venue lies for a patent infringement lawsuit brought against a domestic corporation.” The Court has now provided a response to this key question, although a few issues still remain.

Continue Reading Patent Litigation Venue: Supreme Court Clarifies Venue Statutes in TC Heartland v. Kraft Foods.

 

Leaving EDTX.pngOn Monday, March 27, 2017, the U.S. Supreme Court heard oral argument in TC Heartland v. Kraft Foods Group Brands LLC, a case that could have a profound impact on where patent infringement cases may be litigated.

Although this case has focused a lot of attention on the Eastern District of Texas – a hotbed of patent litigation – it wasn’t even filed in that district. TC Heartland moved to transfer a patent infringement action that Kraft Foods filed in the District of Delaware (a distant second to the Eastern District of Texas in terms of the volume of patent litigation) to the Southern District of Indiana, where TC Heartland is headquartered. After that motion was denied, TC Heartland appealed to the Federal Circuit, arguing that the patent venue statute (28 U.S.C. §1400(b)), not the general venue statute (§1391(c)), sets forth the requirements for venue in patent cases, a position that would limit the venues available to plaintiffs in most infringement actions. In denying TC Heartland’s petition, the Federal Circuit reaffirmed its long-standing view that patent suits may be filed in any judicial district in which the defendant sells an allegedly infringing product. But the U.S. Supreme Court granted certiorari on the appeal, perhaps signaling the Court’s willingness to overturn almost 30 years of practice.

Continue Reading Will 30 Years Of Practice Be Overturned? Supreme Court Hears Oral Argument In TC Heartland v. Kraft Foods.

The plot just thickened in the long-running debate over where patent cases should be litigated.

Yesterday the U.S. Supreme Court agreed to review the Federal Circuit’s decision in TC Heartland LLC v. Kraft Foods, in which the Federal Circuit held that patent suits may be filed in any judicial district in which the defendant sells an allegedly infringing product.  The Federal Circuit has consistently applied this interpretation of the patent venue statute since its 1990 decision in VE Holding.

Continue Reading Supreme Court to Hear Patent Venue Case

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

We are excited to announce the arrival of Bill Kezer, PhD, the newest Member in our Intellectual Property Practice.  Bill joins our team in San Francisco, where he deepens our bench in the professional_william-b-kezer
chemical and pharmaceutical spaces.   He brings a unique perspective to client service, with experience as a research scientist and project leader at two major companies prior to law school, and then as in-house patent counsel before entering private practice.

Bill takes a business-based, product-driven approach to the strategic development of patent portfolios, due diligence reviews of targeted companies and technology, and comparative evaluations of competitive patented technologies. He also works with clients to procure global patent protection for pharmaceutical inventions, and focuses on product protection strategies involving formulations, drug delivery technologies, and dosing methods.

To read more about Bill’s arrival, please click here.

The Federal Circuit recently denied en banc review of its prior decision dismissing a patent infringement suit where a co-owner of the patent-in-suit refused to join the case voluntarily and the court held that it could not force the co-owner to join the suit involuntarily.  See STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. June 6, 2014), en banc denied, No. 2013-1241 (Fed. Cir. Sept. 17, 2014).

The patent at issue involved lithographic patterning techniques for use in the manufacture of semiconductor devices.  In granting the defendant’s motion for summary judgment, the district court held that the patent was unenforceable for most of its existence for failure to comply with a terminal disclaimer, and the court dismissed the remainder of the case for lack of standing because the plaintiff did not join the patent’s current co-owner. The Federal Circuit affirmed the district court’s decision, rejecting the plaintiff’s argument that it was entitled to join the co-owner against its will under Rule 19(a) of the Federal Rules of Civil Procedure.  In a 6-4 decision, the Federal Circuit refused to conduct an en banc review of its prior decision.

In reaching its decision, the Federal Circuit applied the well-settled rule that in order to establish standing in an infringement suit, a patent co-owner must join all other co-owners in the suit.  The Court recognized two exceptions to this rule: (1) where the patent owner has granted an exclusive license and refuses to join a suit brought by its licensee; and (2) where a co-owner agrees to waive his right to refuse to join suit, his co-owners may subsequently force him to join in a suit against infringers. But the Court found that neither exception applied in this case.

In her dissent from the panel’s decision, Judge Newman argued that the co-owner was a necessary party to the suit and must be joined as a matter of procedural law under Rule 19(a). But the majority held “that the right of a patent co-owner to impede an infringement suit brought by another co-owner is a substantive right that trumps the procedural rule for involuntary joinder under Rule 19(a).”