Oliff PLC and the USPTO will be closed on Thursday, November 23 in observance of a federal holiday. Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Friday, November 24.
TC Heartland LLC v. Kraft Foods Group Brands LLC
In, TC Heartland LLC v. Kraft Foods Group Brands LLC, the Supreme Court considered what constitutes proper venue under 28 U.S.C. §1400(b) for a patent infringement lawsuit brought against a domestic corporation. The patent venue statute, §1400(b), provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” The Supreme Court unanimously ruled that, for the purposes of the patent venue statute, a domestic corporation “resides” only in its State of incorporation.
The decision overturns the Federal Circuit’s almost thirty year old precedent, under which a defendant corporation was deemed to reside, for the purposes of patent venue, in any judicial district in which it is subject to personal jurisdiction. The Federal Circuit’s interpretation effectively allowed a patent owner to file suit anywhere a defendant made allegedly infringing sales. The Supreme Court’s decision, however, limits venue for a domestic corporation sued for patent infringement to the state where it is incorporated, or where it “has committed acts of infringement and has a regular and established place of business.” As a result, the ability of patent owners to pursue lawsuits against domestic corporations in courts that are often viewed as more favorable, such as the Eastern District of Texas, will be restricted.
However, the Court expressly declined to address the question of venue for foreign corporations, other than noting its prior decision in Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 U.S. 706 (1972). In that decision, the Supreme Court held that venue for a patent infringement action against a Canadian corporation was not governed by the patent venue statute, but instead was governed by 28 U.S.C. §1391(d) (now codified at §1391(c)(3)), which provides that a foreign corporation may be sued in any judicial district.
Please see our June 27, 2017 Special Report “UNANIMOUS SUPREME COURT RESTRICTS PATENT VENUE RULES FOR DOMESTIC CORPORATIONS” on TC Heartland LLC v. Kraft Foods Group Brands LLC.
TC HEARTLAND LLC v. KRAFT FOODS GROUP BRANDS LLC, Appeal No. 16-341 (U.S. May 22, 2017). Thomas, Roberts, Sotomayor, Kennedy, Ginsburg, Breyer, Kagan, Alito. Appealed from Fed. Cir. (Judges Moore, Linn, and Wallach). (Patent Venue)
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit considered whether the AIA §102 bar to patentability of an “invention [that] was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” imposes a new disclosure requirement for the on-sale bar. The court concluded that the “otherwise available to the public” clause of §102 does not require a sale to publicly disclose the details of the invention, and suggested that the on-sale bar will continue to apply to secret sales.
The Federal Circuit rejected the argument that the text of the AIA “otherwise” clause modifies the “on sale” clause. The court noted that to require a triggering sale to disclose the details of the invention “would work a foundational change in the theory of the statutory on-sale bar,” and Congress would not have instituted this change absent clear language to that effect. Additionally, such a disclosure requirement would encourage an inventor to unfairly extend his monopoly by delaying filing while commercializing the invention. The inventor could make, sell, and profit from his invention as a trade secret and only apply for a patent when the strength of the trade secret waned. Requiring a public disclosure of the invention for an on-sale bar would also withdraw inventions that have been placed in the public domain through commercialization once the patent is ultimately granted. Such factors, the court concluded, would “materially retard the progress of science and the useful arts.”
The Federal Circuit did not give much weight in its analysis to floor statements made by individual members of Congress, emphasizing that such statements “are typically not reliable as indicators of congressional intent.” In any case, the court suggested that the statements merely addressed congressional intent to do away with secret use as prior art, as opposed to secret sales. Although the Federal Circuit declined to decide the broader issue of whether the AIA eliminated “secret sales” as prior art because the issue was irrelevant to the case at hand, its statements suggest that the on-sale bar will continue to apply to secret sales.
February 22, 2017 – The U.S. Supreme Court issued its decision in Life Technologies v. Promega. The Court unanimously interpreted 35 U.S.C. §271(f)(1) to mean that the supply of a single component of a patented multicomponent invention for manufacture abroad does not give rise to infringement. §271(f)(1) provides for the enforcement of patent rights for components that are made in the U.S. but assembled in foreign countries to form a finished product.
The decision reverses the Federal Circuit’s holding that one component is a “substantial portion” under the statute. The Court looked to the ordinary meaning of law terms, stating that the term “substantial portion” refers to a quantitative meaning, as opposed to a qualitative meaning. The Court found that because the law consistently refers to “components,” for example “all or a substantial portion of the components of a patented invention” where “such components are uncombined,” the term “substantial portion” was intended to mean more than one component. As such, the Court held that a single component would not be considered a “substantial portion” as defined in §271(f)(1).
The Court also pointed to §271(f)(2), which explicitly refers to a specific single “component” as further evidence that the term “components” in §271(f)(1) was intended to mean more than one.
Gary Jacobs will be moderating a §101 panel discussion entitled “I Know It When I See It: Insights Into the Past, Present, and Future of 35 U.S.C. § 101” at the D.C. Bar in Washington, DC. on Tuesday, February 21 from 12:00 p.m.- 1:30 p.m.
During this panel, top PTO officials, a member of the Patent Trial and Appeal Board (PTAB), and a former Commissioner will provide additional insight to help make sense of the confusion. Some of the issues that will be discussed are the increase of rejected patent applications, analysis of District Courts invalidating patents on the grounds of §101, and the increase of reversals from the Federal Circuit.
This program is available for both in-person attendance and live webinar/webcast participation. If you would like to attend or have any questions, please see the link provided above.
Holly Ford Lewis has joined Oliff PLC as Co-Chair of our Trademark Group. Holly brings more than 25 years of experience representing clients in intellectual property matters with a focus on trademarks, copyrights and design patents. Holly’s practice includes:
- preparing and prosecuting domestic and international trademark applications;
- enforcing and protecting trademark rights through opposition and cancellation proceedings before the TTAB and, when necessary, through litigation; and
- drafting and negotiating licenses, coexistence agreements and settlement agreements.
Holly also regularly counsels clients on a wide range of IP issues. Such as including brand development and protection, IP focused social media policies, domain name development and protection, trademark piracy and counterfeit issues, and IP due diligence related to complex mergers and acquisitions.
Holly is actively involved in the Anti-Counterfeiting Committee of the International Trademark Association (INTA), as well as several local bar associations. Holly is also proficient in French and Spanish.
We welcome Holly to the firm and we are confident that her experience and expertise will help us better serve our clients.
December 6, 2016 – In Samsung Electronics Co. Ltd. et al. v. Apple Inc., No. 15-777 (U.S. December 6, 2016), the Supreme Court interpreted 35 U.S.C. §289, which governs damages for design patent infringement. Section 289 states that a person who applies a patented design to any “article of manufacture” is liable for infringement and “shall be liable to the owner to the extent of his total profit.” In this context, “article of manufacture” has historically been understood to mean the entire product covered by the design patent. However, in today’s unanimous decision, the Supreme Court overturned a Federal Circuit decision applying that historical understanding to Samsung’s infringement of Apple’s smartphone design patents and held that “the term ‘article of manufacture’ is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” As a result, the Supreme Court remanded the case back to the Federal Circuit to (i) reassess which part(s) of Samsung’s smartphone constitute(s) the “article of manufacture” and (ii) recalculate damages accordingly.
Oliff PLC will issue a Special Report addressing this decision and its potential impact in greater detail.
June 20, 2016 — The U.S. Supreme Court issued its decision in Cuozzo Speed Technologies, LLC v. Lee. The Court unanimously affirmed the USPTO’s application of the broadest reasonable interpretation (BRI) standard for interpreting patent claims in an inter partes review (IPR). The Court agreed with the Federal Circuit that the America Invents Act’s (AIA) statutory framework gave the USPTO the legal authority to apply the BRI standard, and that no AIA provision unambiguously directs the USPTO to use a particular claim construction standard. The Court also rejected Cuozzo’s argument that IPRs are trial-like proceedings and, thus, the USPTO should use the “ordinary meaning” claim construction standard articulated in Phillips. In this regard, the Court found that IPRs, in many significant respects, are less like a judicial proceeding and more like a specialized agency proceeding.
A majority of the Court also held that 35 U.S.C. § 314(d) bars Cuozzo’s challenge to the USPTO’s decision to institute the IPR. Section 314(d) explicitly states that the determination whether to institute an IPR “shall be final and nonappealable.” Justice Alito, joined by Justice Sotomayor, wrote a dissenting opinion on this point arguing that the statute should properly be read as preventing only interlocutory appeals, but the majority rejected that interpretation holding that it bars interlocutory appeals, as well as later reviews as part of an appeal after the final IPR determination. Recognizing the “strong presumption” favoring judicial review, the majority emphasized that their interpretation of § 314(d) “applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” Thus, the Court left open the possibility of an appeal in cases that implicate constitutional questions or that present other questions of interpretation that go well beyond the statutes related to USPTO post grant proceedings.
Alexandria – Mr. Anthony (Tony) Knight, Director, Stakeholder Outreach and the Patents Ombudsman Program of the United States Patent and Trademark Office (USPTO) was a guest speaker during a recent CLE seminar hosted by OLIFF PLC. Tony gave an insightful presentation about the Patents Ombudsman Program.
“I want to thank Tony very much for coming over and doing this and we really salute you and the Patent Office for this kind of dialogue. We pride ourselves in our relationship with the Patent Office and this is a big step forward from our standpoint to keeping these lines of communication open.”
– Jim Oliff
The Ombudsman Program was initiated in 2010 as a way for the USPTO to improve customer service and enhance the USPTO’s ability to assist applicants and their representative with issues that may arise during prosecution of a patent application: “[W]hen there is a breakdown in the normal application process, including before and after prosecution, the Patents Ombudsman Program can assist in getting the application back on track.”