Since the TC Heartland decision in which the Supreme Court ruled that the “residence” prong in the patent venue statute, 28 U.S.C. § 1400(b), refers only to the state of incorporation and not the definition conferred in the general venue statute, § 1391, parties and courts have focused attention on interpreting the alternative basis for venue under the statute: “where the defendant has committed acts of infringement and has a regular and established place of business.” TC Heartland v. Kraft Foods Group Brands, 137 S. Ct. 1514, 1516 (2017). Of particular interest is how courts have ruled on what constitutes “a regular and established place of business.” In September 2017, the Federal Circuit clarified that a “regular and established place of business” must meet three general requirements: “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.” In re Cray, 871 F.3d 1355, 1360 (Fed. Cir. 2017). First, there must be a “physical place,” i.e., a “physical, geographical location in the district from which the business of the defendant is carried out.” Id. at 1362. The Court defined a...
On March 25, 2014, the United States Patent and Trademark Office (USPTO) announced that the Patent Trial and Appeal Board (PTAB) would be hosting roundtables across the country to educate the public, and collect feedback regarding the new America Invents Act (AIA) trial proceedings. These roundtables are free and open to the public. According to Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Michelle Lee, “[t]hese roundtables are a part of USPTO’s ongoing efforts to provide more opportunities for the public and other key stakeholders to share ideas, feedback, experiences and insights on additional ways we can improve our processes.”
Since March 16, 2013, the United States has been under a first-inventor to-file patent system. Although it has always been good scientific practice for inventors to keep and maintain laboratory notebooks, it was all the more important in a first-to-invent patent system. In light of the recent changes in U.S. patent law, will keeping and maintaining a laboratory notebook have any importance for patent applications filed under the new system?
Gibbons Directors Robert Rudnick & Thomas Bean to Serve on Panel for Upcoming Gibbons Institute of Law, Science & Technology Event
Robert E. Rudnick and Thomas J. Bean, Directors in the Gibbons Intellectual Property Department, will serve as panelists at the upcoming Gibbons Institute of Law, Science & Technology event, “USTPO Patent Post-Issuance Proceedings Under the American Invents Act — a New Frontier” on April 23. Mr. Rudnick and Mr. Bean, along with Kenneth Corsello of IBM and other industry and academic leaders, will address post-grant proceedings under the American Invents Act (AIA), from both the patent owner’s and challenger’s perspectives, as well as discovery and other new rules of practice before the Patent Trial and Appeal Board (PTAB). CLE credits for New Jersey and New York will be offered.
In one of the apparently few judicial decisions of its kind to date, the District of Delaware recently granted a motion to stay six patent infringement actions, pursuant to Section 18 of the America Invents Act (AIA), pending resolution of post-grant review proceedings in the U.S. Patent & Trademark Office (USPTO) to reexamine the validity of the so-called covered business method (CBM) patents at issue. As defined by AIA § 18(d)(1) and 37 C.F.R. § 42.301, a CBM is “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.”
Upon the passage of the America Invents Act (“AIA”) and in an effort to help individuals and corporations who are unable to afford legal advice relating to intellectual property, the USPTO has recently announced two additional pro bono assistance programs in California and the District of Columbia. With the addition of these two programs, the USPTO has created four intellectual property pro bono programs across the United States and is forecasting an additional ten by the end of 2013.
USPTO Extends Deadline for Commenting on First Inventor to File Provisions of the AIA to November 5, 2012
On July 26, 2012, the U.S. Patent & Trademark Office (USPTO) published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions of the AIA effective March 16, 2013. The notices set an initial comment deadline date of October 5, 2012. In response to requests for additional time to submit comments, the USPTO recently extended the comment deadline date to November 5, 2012.
As practitioners know, U.S. patent law provides for the recovery of patent infringement damages for a period of time when an infringer has actual or constructive notice of the infringed patent. Actual notice is provided by way of letter or similar mechanism to the infringer after infringement has begun. Constructive notice can be provided by placing the patent number on the patented product. Such constructive notice provides notice to the infringer of the existence of a patent prior to actual notice, thereby extending the time period for recovering damages up to the date the infringement begins.
In Norman IP Holdings, LLC v. Lexmark Int’l, Inc., a recent Eastern District of Texas decision, Chief District Judge Leonard Davis provided guidance on the application of Fed. R. Civ. P. 20 (“Rule 20”) joinder and Fed. R. Civ. P. 42 (“Rule 42”) consolidation in patent infringement cases post-enactment of the Leahy-Smith America Invents Act (“AIA”). Norman IP brought suit against Lexmark and others on September 15, 2011, one day before the AIA was signed into law. Norman IP later added an additional 23 defendants. The defendants filed a motion to dismiss for improper joinder or to sever, and Norman IP alternatively requested that any severed cases be consolidated under Rule 42. The Court granted defendants’ motion to sever and issued an order consolidating the cases for pretrial issues excluding venue.
We previously reported on the new 35 U.S.C. § 299 of the America Invents Act. This statute aims, inter alia, to reduce the ability of a patent owner to join multiple, unrelated defendants in a single action, which is a tactic often employed by non-practicing entities (“NPEs”), sometimes referred to as “patent trolls,” who press defendants for nuisance value settlements.