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.
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. This is important because it is the first time the ITC has issued an exclusion order on standard-essential patents (SEPs), and may be the first time any U.S. tribunal has issued exclusionary or injunctive relief on patents which were declared standard essential. In the opinion, which should become public in a few weeks, ALJ Shaw, who presided over the case, is expected to address a number of key issues relating to the assertion of SEPs in general, and at the ITC specifically. In this case many of Sony’s affirmative defenses relate to the alleged essentiality of the asserted patents and the Administrative Law Judge was asked to answer a number of questions relating to SEPs generally and the ability to enforce them at the ITC.
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. The DTSA directs that civil seizure only be used in “extraordinary circumstances,” however, and courts entertaining requests for civil seizure have hewed closely to this directive. See, e.g., OOO Brunswick Rail Mgt. v. Sultanov, Case No. 5:17-cv-00017 (N.D. Cal. Jan. 6, 2017) (denying request for civil seizure and instead ordering preservation of devices at issue pursuant to Rule 65); Magnesita Refractories Co. v. Mishra, 2:16-cv-524 (N.D. Ind. Jan. 25, 2017) (same); Dazzle Software II, LLC v. Kinney, Case No. 1:16-cv-12191 (E.D. Mich. July 18, 2016) (denying request for civil seizure where court not convinced that defendant would not comply with order under Rule 65); Balearia Caribbean Ltd. Corp. v. Calvo, Case No. 1:16-cv-23300 (S.D. Fla. Aug 5, 2016) (“a plaintiff may not rely on bare assertions that the defendant, if given notice, would destroy relevant evidence”).
In what appears to be the first civil seizure order under the DTSA, in Mission Capital Advisors LLC v. Romaka, No. 16-cv-5878 (S.D.N.Y. July 29, 2016), the U.S. District Court for the Southern District of New York ordered federal marshals to seize contact lists and other electronically-stored information that was allegedly misappropriated by Defendant, a former employee of Plaintiff. The circumstances of this case provide insight into what “extraordinary circumstances” are necessary for a district court to order civil seizure under the DTSA. Continue Reading DTSA and Ex Parte Seizure – Lessons from the First Ex Parte Seizure Under The DTSA
Over at the Copyright & Trademark Matters blog, our colleagues have published a complete write-up on the Supreme Court’s decision in Star Athletica, L.L.C. v. Varsity Brands, Inc. (No. 15-866), in which the Justice’s ruled that the decorative elements on a cheerleading uniform can fall within the scope of articles protectable by copyright.
Justice Thomas, writing for the majority, ruled that the decorative elements on the cheerleading uniforms (shown below) met the threshold requirement of being a “pictorial, graphic, or sculptural work” that can be granted a copyright if the copyrightable elements are sufficiently original and meet other requirements of the Copyright Act. Slip Op. at 10-11.
Recently, the U.S. District Court of Delaware dismissed a complaint filed by Genentech under the Biologics Price Competition and Innovation Act (“BPCIA”). The complaint was filed in response to Amgen seeking FDA approval to commercialize a biosimilar version of Genentech’s cancer drug, Avastin®.
Pursuant to 42 U.S.C. § 262(l)(2), a key provision of the BPCIA, upon FDA acceptance of a biosimilar application for review, an applicant has twenty days to submit the application and “such other information that describes the process or processes used to manufacture the biological product that is the subject of such application” to the reference product sponsor (“RPS”). According to Genentech’s complaint, Amgen produced the application for its proposed Avastin® biosimilar, but declined to provide manufacturing information. Genentech also alleged that this “obstructed Genentech’s ability to perform an infringement analysis of its patent portfolio by withholding ‘confidential information’ highly relevant to that analysis,” and further, that Amgen “unreasonably with[held] its permission for any of Genentech’s expert consultants to review the limited information…Amgen has provided.” Continue Reading BPCIA Helps Amgen Gain Dismissal of Genentech Complaint
On March 3, 2017, the United States Court of Appeals for the Federal Circuit reaffirmed, in a precedential opinion, that prosecution disclaimers may only limit the scope of a claim where the disclaimer is “both clear and unmistakable to one of ordinary skill in the art.” In Technology Properties Ltd. v. Huawei Technologies Co., Ltd., the Federal Circuit made clear that statements made during patent prosecution will not constitute a disclaimer of claim scope where the statements are “ambiguous or amenable to multiple reasonable interpretations,” but that a disclaimer based on unambiguous statements during prosecution may serve to surrender more claim scope than was necessary to overcome a rejection. Continue Reading Federal Circuit Reiterates That Patent Prosecution Disclaimers Must Be “Clear and Unmistakable”
The Federal Circuit has further clarified the scope of the covered business method (CBM) review program under the America Invents Act (AIA), explaining in Secure Axcess, LLC. v. PNC Bank National Association that in order for patent to be a CBM patent, it is not enough that the claimed subject matter may be used in a financial activity. Rather, to qualify as a CBM patent, a patent must have at least one claim that contains a financial activity element.
The AIA contains a temporary program by which a CBM patent may be challenged on any ground of patentability. A threshold requirement to CBM review is that the challenged patent is in fact a covered business method patent. The AIA defines a CBM patent as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA §18(d)(1). Continue Reading Federal Circuit Clarifies Scope of Covered Business Method Review
Did Qualcomm utilize anticompetitive licensing tactics to extract excessive royalties from OEMs for its standard-essential patents (SEPs)? Is the company seeking to weaken its competitors by refusing to license its patents on fair, reasonable, and non-discriminatory (FRAND) terms? The Federal Trade Commission thinks so and filed suit against Qualcomm on January 17 in the Northern District of California for allegedly monopolizing the market for CDMA and LTE baseband processor technologies.
Issuance of the complaint was authorized on a 2-1 vote of the Commission, which hinged on the vote of President Obama-appointed FTC Chairwoman Edith Ramirez, so the Inauguration of Donald J. Trump as President on Friday may have direct implications on this case.
The Mintz Levin team discusses the case and points out the irony of the timing since the FTC and Antitrust Division of the Department of Justice (DOJ) issued their revised Antitrust Guidelines for the Licensing of Intellectual Property on January 13, in which they declined to adopt guidelines relating to precisely this sort of conduct.
Read our full discussion.
The New Year brings excitement and anticipation of changes for the best. Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least different. In this post, we highlight several cases that present interesting issues and that we anticipate may provide for new and important developments in the patent law this year.
Earlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101. Both patents—the ’050 and the ’610—are directed to filtering email or file content. (IV does not challenge the invalidation of a third patent, which was directed to receiving, screening, and distributing email.) The petition echoes concerns raised by clients, courts, and the patent bar about the growing uncertainty about what is—and what is not—patent eligible, especially in the area of software patents. Identifying two emerging fault lines in the court’s evolving section 101 jurisprudence, IV urges the full court to bring much needed doctrinal clarity and methodological consistency to the patent eligibility analysis. Continue Reading Intellectual Ventures Petitions Federal Circuit for Full Court Review