In re: TC Heartland LLC: Status Quo for Venue Selection in Patent Suits (For Now)

The Federal Circuit, in In re: TC Heartland LLC (No. 2016-105), recently issued an opinion denying TC Heartland’s petition for a writ of mandamus to direct the U.S. District Court for the District of Delaware to either dismiss or transfer the patent infringement suit filed against it by Kraft Foods Group Brands LLC (“Kraft”).  This case is significant because it rejected an argument that, if accepted, could have limited the number of suits filed by non-practicing entities in districts that are viewed as patent-friendly and far-afield of where corporate defendants meaningfully engage in business.

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Pssst, The Secret Is Knowing What You Can’t Do With The Defend Trade Secrets Act

The Defend Trade Secrets Act (“DTSA”) became law with President Obama’s signature on May 11, 2016. The DTSA is an amendment to the Economic Espionage Act of 1996 and, for the first time, affords a federal private right of action to protect trade secrets. Prior to its passage trade secret protection was the exclusive province of state law.

In 48 of the 50 states (New York and Massachusetts excluded) that protection comes in some version of the Uniform Trade Secrets Act (“UTSA”). Much of the DTSA is consistent with the UTSA but there are some significant new wrinkles which either expand, or limit, the relief which can ordinarily be obtained under state law. In some circumstances state law will remain the best option. To follow is an overview of what can, and can’t, be done with the DTSA.

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It’s a Jungle Out There: A Reexamination Certificate Containing Amended Claims May Be Insufficient to Vacate a Prior Judgment of Invalidity

In a case with a unique procedural history the Federal Circuit addressed whether claims amended during an ex parte reexamination proceeding required vacating a prior judgment of invalidity (on patent eligibility grounds) on the original claims. While stressing the discretion of the district court, the Federal Circuit in Cardpool, Inc. v. Plastic Jungle, Inc. (Fed. Cir. Apr. 5, 2016) suggested that a reexamination certificate containing new and amended claims, on its own, is an insufficient basis for vacating a prior judgment of invalidity but that res judicata might not necessarily apply to the amended claims. Continue reading this entry

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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