On April 18, 2018, the International Trade Commission (“Commission”) reversed an Administrative Law Judge’s (“ALJ”) finding that a litigation funding agreement destroyed standing for a complainant at the ITC.  In Certain Audio Processing Hardware, Software, and Products Containing the Same, Inv. No. 337-TA-1026 (the “1026 investigation”), the ALJ issued an initial determination (“ID”) that found that Complainant Andrea did not have standing to assert the 6,363,345 (“the ’345 patent”) against Respondent Apple without joining litigation funder AND34, with which Andrea entered into a Revenue Sharing and Note Purchase Agreement (the “funding agreement”) to fund Andrea’s enforcement activities. But on review, the Commission concluded that the ALJ was wrong and reversed the portion of the ID that found that the funding agreement between Andrea and AND34 undermined standing.

Continue Reading International Trade Commission Clarifies the Intersection Between Litigation Funding Agreements and Standing

On April 16, 2018 in a precedential opinion, the United States Court of Appeals for the Federal Circuit, Sumitomo Dainippon Pharma v. Emcure Pharms., Nos. 2017-1798, -1799, -1800, affirmed the United States District Court for the District of New Jersey by construing the claimed chemical structure diagram to encompass at least the specific enantiomer depicted, refusing to limit the claim to only cover a racemic mixture of the (+) and (–) enantiomers, absent clear indication that the depicted enantiomer should be excluded from the claim.

Continue Reading Federal Circuit Provides Guidance for Stereochemistry Claim Construction

The Federal Circuit provided a welcome boost for stakeholders in the field of personalized medicine with its recent decision in Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. (2016-2702, 2016-2708 April 13, 2018). Vanda Pharma’s asserted claims relate to a method of treating schizophrenia patients with iloperidone in which the dose is adjusted based upon the patient’s CYP2D6 genotype. The Federal Circuit agreed with the court below that these claims were both directed to patent eligible subject matter and infringed.

Continue Reading Personalized Medicine Gets a Boost from Federal Circuit’s <i>Vanda Pharma</i> Decision

Functional Claiming in Software Patents

Software patents are generally directed to a sequence of steps or rules, i.e., an algorithm, performed by a computer programmed to carry out the algorithm.  Because algorithms are inherently functional in nature, software patent claims are frequently written using functional, as opposed to structural, terms.  In many cases, software claims recite vague sounding “units” or “modules” to carry out steps of the algorithm.

Consequently, software claims are often subject to the means-plus-function guidelines set forth in 35 U.S.C. §112(f), which require that the specification describes structure to perform the claimed function.  Although a computer-implemented algorithm is necessarily executed using structural parts—e.g., a microprocessor, a memory, etc.—a description of such parts in the specification, on its own, may not suffice as the structure needed to satisfy 35 U.S.C. §112(f) and protect the claims from indefiniteness. Continue Reading With Software Patents and Means-Plus-Function, “Structure” Takes On a New Meaning

The term “blockchain” is everywhere, and it is likely that you will interact with blockchain technology every day in the years to come.

Blockchain technology recently came to the public’s attention thanks to rising prices in cryptocurrencies, like Bitcoin.  However, it continues to expand into almost anywhere information is stored, like primary voting, healthcare, and real estate.  Startups are even using initial coin offerings (ICOs) built on blockchain technology to raise money instead of using a more traditional venture capital route.  A startup company can release its own digital currency, which investors can purchase instead of buying shares in the company.  In 2017, startups raised $6.8 billion through ICOs.

What is blockchain?

Continue Reading What is blockchain and how will it affect me?

The United States Patent and Trademark Office (USPTO) anticipates issuing the 10 millionth utility patent at some point during the summer 2018. According to the USPTO, “[t]his milestone of human ingenuity perhaps exceeds even the Founding Fathers’ expectations when they called for a patent system in the Constitution to `promote the Progress of Science and useful Arts.’” (https://10millionpatents.uspto.gov/)

As part of the celebration, and for only the second time in 100 years, the USPTO has redesigned the cover of the U.S. patent (i.e., the seal-and-ribbon document issued with each patent granted). The new design, which according to the USPTO “pays homage to the classic elegance of its predecessors,” was unveiled March 11, 2018, at the South by Southwest (SXSW) festival in Austin, Texas. (https://10millionpatents.uspto.gov/media-kit.html)

Continue Reading USPTO Prepares to Celebrate the Issuance of the Ten Millionth U.S. Patent

The Eastern District of Pennsylvania recently granted immunity under the whistleblower provision of the Defend Trade Secret Act in what appears to be the first decision of its kind under the new federal trade secret statute. The DTSA’s whistleblower immunity safe harbor protects employees from civil or criminal liability for a confidential disclosure of trade secrets to an attorney “solely for the purpose of reporting or investigating a suspected violation of law.” There have been relatively few decisions interpreting this section of the DTSA since its enactment, all of which found that the whistleblower provision was not satisfied. See, e.g., Unum Grp. v. Loftus, 220 F. Supp. 3d 143 (D. Mass. 2016). With the first decision granting immunity under the whistleblower provision, litigants now have further guidance as to circumstances where the whistleblower provision may apply.

Continue Reading District Court Grants Protection under DTSA Whistleblower Immunity for First Time

An introduction to § 271

Section 271 of Title 35 of the United States Code is the statute that codifies unlawful acts of patent infringement.  The most commonly asserted provisions are § 271(a) (direct infringement), § 271(b) (induced infringement), and § 271(c) (contributory infringement).  However, other less frequently asserted provisions must also be considered when enforcing United States patents.  For example, § 271(e) pertains to the infringement of patents on pharmaceuticals, specifically barring certain acts, while explicitly permitting others.  Additionally, § 271(f) covers infringement by a party who supplies components of a patented invention to recipients outside of the United States with the knowledge the components will be combined “in a manner that would infringe the patent if such combination occurred within the United States.”  And, finally, § 271(g) covers importation infringement, making liable a party that imports into the United States or offers to sell, sell or uses within the United States a product which is made by a patented process during the term of such a patent.  While possibly the least often litigated, § 271(f) is now before the Supreme Court, in a case examining the applicability of foreign lost profits damages to § 271(f) infringement.

Continue Reading <i>WesternGeco v. ION Geophysical Corp.</i> and Lost Profit Damages under § 271(f)

On March 20, 2018, the public version of Eastern District of Texas Magistrate Judge Roy Payne’s March 7, 2018 order tossing a $75 million jury verdict obtained by Ericsson against TCL Communication was released.  Ericsson Inc., et al, v. TCL Communication Technology Holdings, Ltd., et al, Case No. 2:15-cv-00011-RSP, Doc. No. 460 (redacted memorandum opinion and order) (E.D. Tex. March 7, 2018) (“Order”).  Judge Payne’s order sheds important light on the damages analysis for infringement of patents covering features of smartphone technology and potentially provides lessons to future litigants seeking damages for smartphone innovations.

After a jury verdict finding infringement, Ericsson also won a damages verdict of $75M due to TCL’s ongoing and willful infringement of U.S. Patent No. 7,149,510 (“the ’510 patent”).  Ericsson contended that the ’510 patent covers smartphone functionality that allows a user to grant or deny access to native phone functionality to a third-party application, which is a standard feature in all Android smartphones.  After trial, TCL moved for judgment as a matter of law on infringement and damages, or in the alternative new trials.  Judge Payne indicated that he was going to uphold the infringement verdict, but ordered a new trial on damages.  Order at 1.

Continue Reading Patent Damages: How Many Essential Features in a Smart Phone?

Further to our ongoing coverage of post-TC Heartland patent litigation, in a recent development from the Northern District of Illinois, the court granted counterclaim defendants’ motion to dismiss for improper venue.  In Shure Incorporated v. ClearOne, Inc., 1-17-cv-03078 (ILND March 16, 2018, Order), the court was blunt in dismissing the plaintiff’s argument regarding the applicability of purported “ancillary” venue.  Plaintiff argued that the doctrine of ancillary venue, where parties are added in conjunction with a compulsory counterclaim are within the court’s supplemental jurisdiction, does not require an independent basis for venue.  The court disagreed, and did not mince words: “[t]his argument is rejected. ClearOne cites no authority for the proposition that the doctrine of ancillary venue (whatever that really is) can override the clear terms of the patent venue statute.”

In properly assessing venue, the court analyzed whether venue was proper under the first part of 28 U.S.C. § 1400(b), which permits a patent infringement action to be brought in the judicial district where the defendant “resides.”  Here, the court dismissed counterclaim defendants’ because both defendants lacked a regular and established place of business in the district.  One defendant was incorporated in Delaware, and the other was based out of California.  The court determined that neither company could be deemed to “reside” in the Northern District of Illinois.

Continue Reading Doctrine of “Ancillary Venue” Does Not Trump <i>TC Heartland</i>