Can Foreign Sales Infringe U.S. Patents?

Globe ImageIt is a deceptively simple question with a not so simple answer. A purely foreign transaction is certainly beyond the reach of U.S. patent law, but what if part of the transaction occurs within the United States?  For example, if a company executes a contract in the U.S. to manufacture and deliver a product overseas, and that product is covered by a U.S. patent, has the patent been infringed? After decades of confusion in the courts, the Federal Circuit provided some much needed guidance in its 2014 ruling in Halo Electronics, Inc. v. Pulse Electronics, Inc., 769 F.3d 1371 (Fed. Cir. 2014), but stopped short of announcing any bright-line tests. This article examines the efforts that the Federal Circuit and district courts have made to resolve this fundamental question of infringement liability in our increasingly global economy.  
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What "Reasonably" Could Have Been Raised in an Inter Partes Review?

Since their introduction, inter partes review (“IPR”) proceedings have had a close association with district court litigation. Indeed, litigation defendants are often the petitioners who initiate IPR proceedings. Therefore, the effect that an IPR can have on concurrent or potential litigation is an important consideration for petitioners.

Among the factors that petitioners must consider are the IPR estoppel provisions. In particular, 35 U.S.C. § 315(e)(2) dictates that once the Patent Trial and Appeal Board (“PTAB”) has issued a final written decision on a patent’s claim(s), an IPR petitioner may not assert “that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.” Section 315(e)(2) estoppel seemingly narrows the scope of the invalidity defenses that may be asserted not only in subsequent district court litigation, but also subsequent International Trade Commission proceedings.

While previously the subject of some ambiguity, the scope of § 315(e) estoppel, and the meaning of “reasonably could have been raised,” has been illuminated by at least one recent district court decision.

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March 2016 Amendments to the Federal Circuit Rules of Practice

On March 30, the United States Court of Appeals for the Federal Circuit published amended Federal Circuit Rules of Practice. Below is a summary of the most significant changes that are likely to impact your practice before the Court, but if you are filing something after these rules go into place, it is important to read the applicable rules yourself to get the details.
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Patent Venue Legislation Could Have A Dramatic Impact on Popular Patent Venues

This month, three United States Senators introduced the “Venue Equity and Non-Uniformity Elimination Act of 2016.”  The bill would dramatically narrow the venue statute that applies to patent cases and, it appears, prevent most cases from being litigated in the popular venues for patent cases, such as the Eastern District of Texas.

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The Estoppel Effects of IPR May Be Significantly Limited

A recent case at the Federal Circuit seems to significantly limit the estoppel effect of an Inter Partes Review (IPR) that is instituted on some grounds, but not all.  The case adds another arrow in the strategic quiver of litigators when deciding whether to bring an IPR and what art should be presented to the PTAB.  In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit held that the statutory language creating estoppel effects following institution of an IPR did not extend to non-instituted grounds.

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