Unique Venue and Personal Jurisdiction Challenges of Foreign Corporations

In 2017, the Supreme Court rejected the Federal Circuit’s longstanding interpretation of Personal Jurisdiction and Venue in patent infringement actions against domestic companies. 28 U.S.C. §§ 1391, 1400; see TC Heartland LLC v. Kraft Food Group Brands LLC, 137 S. Ct. 1514 (2017). Under TC Heartland, a domestic corporation can only be sued in its State of incorporation or a district where it has both committed acts of infringement and has a regular and established place of business. See id. In effect, the Supreme Court lessened the ability to “forum shop” in jurisdictions with favorable win rates and local patent rules. See id. Notably, the Supreme Court expressly did not address Brunette Mach. Works, Ltd. v. Krockum Indus., Inc., 406 U.S. 706 (1972) which analyzed personal jurisdiction and venue over foreign corporations. See TC Heartland, 137 S. Ct. at 1520 n.2. As such, foreign corporations, presently, are not afforded the same arguments and conveniences regarding forum shopping and unfamiliar jurisdictions. See § 1391(c)(3); id.

Continue reading this entry

Federal Circuit Rejects Appeal of Walker Process Claim

In Xitronix Corp. v. KLA-Tencor Corp., No. 2016-2746 (Fed. Cir. Feb. 9, 2018), the Federal Circuit considered whether it or a regional circuit had jurisdiction over an appeal of a case raising only Walker Process antitrust claims. The court held that, in view of the Supreme Court’s decision in Gunn v. Minton, 568 U.S. 251 (2013), the Federal Circuit did not have jurisdiction and it transferred the case to the Fifth Circuit.

Continue reading this entry

New Possibilities for Copyrighting Consumer Products

Traditional wisdom has been that aesthetic designs for three-dimensional consumer products, while protectable by design patents and as trade dress, are not protectable under copyright law which is typically associated with purely artistic works.  However, the Supreme Court’s March 2017 decision in Star Athletica, L.L.C. v. Varsity Brands, Inc. refined the test for copyrightability of so-called “useful articles,” opening the door to copyright protection for a broader array of consumer product shapes and patterns. Now, several recent cases interpreting Star Athletica confirm that the right kind of industrial designs can indeed be copyrighted. Given that copyright registrations cost so little to acquire, last for decades, and carry the potential for high damages against infringers, companies should consider whether certain of their consumer product designs may now be eligible for copyright protection.

Continue reading this entry

Pleading a Claim for Misappropriation of Trade Secrets in California: A Problem of Particularity

Recent decisions in California raised the question of whether a party asserting a claim for misappropriation of trade secrets must, in its pleadings, define the trade secrets at issue with particularity.[1]  The cases variously involved claims of misappropriation under both federal and state law: the Defend Trade Secrets Act (DTSA)[2] and the California Uniform Trade Secrets Act (CUTSA).[3]  While pleading standards in federal court typically require only that the party set forth sufficient “facts to state a claim to relief that is plausible on its face,”[4] there has been some disagreement among decisions in California for claims under the CUTSA.

Some courts have required parties to identify trade secrets with reasonable particularity in their pleadings because of California Code of Civil Procedure § 2019.210, which states that “before commencing discovery relating to the trade secret, the party alleging the misappropriation shall identify the trade secret with reasonable particularity.”  For example, in Pellerin v. Honeywell Int’l, Inc.,[5] the counterclaimant asserted trade secret misappropriation involving foam earplug manufacturing operations.  The court in Pellerin stated that the standard for pleading trade secret misappropriation under the CUTSA when the trade secret is a manufacturing process requires a complaint to “describe the subject matter of the trade secret with sufficient particularity to separate it from matters of general knowledge in the trade or of special knowledge of those persons who are skilled in the trade, and to permit the defendant to ascertain at least the boundaries within which the secret lies.”[6]

Continue reading this entry

Federal Circuit: Rare Guidance on Subject Matter Eligibility of Software Claims

In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. et al., the Federal Circuit offered rare guidance on the contours of patent eligible subject matter under § 101.

The two related asserted patents, both entitled “Computing device with improved user interface for applications,” are directed to an improved user interface which has a “specific application to mobile telephones” with small screens. The improved interface allows users to more quickly access functions and data on devices with a small screen that “tend to need data and functionality divided into many layers or views.” The patents’ solution is an “application summary window” that displays “a limited list of common functions and commonly accessed stored data which itself can be reached directly from the main menu listing some or all applications.” Continue reading this entry