Category Archives: Procedure

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The Decision To Grant Rehearing En Banc In Apple v. Samsung

On October 7, 2016, the Federal Circuit issued another decision in the ongoing patent litigations between Apple and Samsung that began in the Northern District of California. The district court had found at summary judgment that Samsung infringed one of Apple’s patents.  The jury subsequently determined that Samsung infringed two others, and that the asserted … Continue reading this entry

The Evolving Standard for Pleading Direct Patent Infringement

It has been a little more than half a year since the amendments to the Federal Rules of Civil Procedure abrogated Rule 84 and put an end to the Form 18 bare-bones style patent complaint.  The question on the minds of many patent litigators has been: What standard would emerge for pleading direct patent infringement … Continue reading this entry

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 … Continue reading this entry

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.… Continue reading this entry

No Due Process Violation Where Judgment Entered on Patents Not Asserted at Trial

A recent case reminds litigators to be diligent in protecting their clients’ due-process rights when narrowing a case for trial or risk forfeiting the right to trial altogether.  In Nuance Communications v. ABBYY USA Software House, Inc., the Federal Circuit ruled that due process rights were not violated when a district court entered judgment of … Continue reading this entry

Federal Circuit Provides Additional Insight into the Scope of Board Institution-Related Decisions That Are Not Appealable

Just as inter parties review proceedings (“IPRs”) are limited in scope, addressing invalidity based only on patents and printed publications, practitioners should keep in mind that appellate review of United States Patent Trial and Appeal Board (“Board”) decisions from IPRs is similarly constrained. Indeed, much of what occurs in front of the Board is not … Continue reading this entry

Deposition Practice Tips: PTAB Guidance for Dealing With Suspected Witness Coaching

Question: What can you do when you suspect that opposing counsel engaged in inappropriate witness coaching during a PTAB deposition?  Answer: Ask the witness about the suspected off-the-record discussions and call the Board from the deposition, if necessary. In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00434, Paper 12 (Feb. 10, 2015), in a post-conference … Continue reading this entry

Pre-Trial Consolidation May Run Afoul of the America Invents Act

The America Invents Act introduced a new statute, 35 U.S.C. § 299, which provides that “accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.” In the years since … Continue reading this entry

PTAB Requires Additional Showing for Cross-Examination If Testimony Was Prepared for Another Proceeding

A recent order from the Patent Trial and Appeal Board (“Board”) in an inter partes review illustrates how the Board may handle situations where a party seeks to depose a declarant whose testimony was submitted through a declaration from another proceeding – requiring the party to demonstrate that the deposition is “necessary in the interest of … Continue reading this entry

More Changes in Delaware: Judge Stark Revises Patent Case Procedures

Chief Judge Leonard P. Stark of the District of Delaware recently issued revised procedures for managing patent cases that are assigned to him. These revised procedures affect nearly every aspect of a case including scheduling, motions, discovery, claim construction, and trial. Indeed, many of these issues must now be addressed very early in the case. … Continue reading this entry

Whither Bilateral Patent Prosecution Bars?

Patent practitioners involved in both litigation and prosecution might take comfort in the growing trend away from bilateral patent prosecution bars incorporated into protective orders. Defense attorneys have long contended, especially in cases brought by Non-Practicing Entities (NPEs), that any bar against patent prosecution should apply unilaterally to the NPE’s counsel. NPEs generally do not develop products, and … Continue reading this entry

District Court: Notification of IPRs Necessary to Comply with Duty of Candor and Good Faith

On May 2, 2014, Judge Davis of the Eastern District of Virginia determined that counsel in a pending patent litigation “failed to comply with their general duty of candor and good faith to this Court” by not disclosing the fact that the defendant had filed petitions for inter partes review on the patents-in-suit while a … Continue reading this entry

"Patent Reform 2014" White Paper Available for Download

Over the past 2 years I’ve been closely following the slew of patent reform proposals in Congress, the Executive Branch, the Courts, and the 50 States.  I have yet to find a document that lists–much less explains–all the many, many proposals percolating in DC and across the country. So I wrote one: “PATENT REFORM 2014:  A Comprehensive Guide to Current … Continue reading this entry

New Scheduling Order May Preview Future Delaware “Local Patent Rules”

On March 24, 2014, Judge Sue L. Robinson of the District of Delaware adopted a new model Scheduling Order for patent cases litigated in her court. Apart from providing a comprehensive set of deadlines for virtually every aspect of a patent case, the Order calls for proactive judicial involvement through a series of pre-scheduled in-person status conferences. While … Continue reading this entry

Trend to Limit Discovery in Patent Litigation Continues

Recent developments by the courts, administrative agencies, and Congress include rules, guidelines, and proposed legislation aimed at limiting discovery in patent litigation. Practitioners seeking to balance efforts to reduce discovery costs with preserving relevant documents according to the rules should be aware of the continuing trend to limit the discovery of electronically stored information (“ESI”). … Continue reading this entry

The Joinder Provision of the AIA is Not a Substitute for Discretion

The Federal Circuit recently confirmed that district courts must still exercise discretion in deciding motions to sever where the heightened joinder requirements of the AIA are satisfied. In In re Nintendo, Co.¸ __ Fed. App’x __ (Fed. Cir. Sept. 25, 2013) (nonprecedential), UltimatePointer, LLC sued Nintendo and numerous video game retailers in the Eastern District of Texas … Continue reading this entry

Federal Circuit Determines It Does Not Have Jurisdiction to Address Dispute With Heinz

Under the America Invents Act (“AIA”), the Federal Circuit has jurisdiction over appeals based on a civil action “in which a party has asserted a compulsory counterclaim arising under any Act of Congress relating to patents.” Recently, however, the Federal Circuit made clear that its jurisdiction to hear cases under 28 U.S.C. § 1295, as set … Continue reading this entry

Limiting Patent Claims and Prior Art (With or Without a Model Order)

Last week, the Federal Circuit Advisory Council announced a Model Order intended to encourage limitations on patent claims and prior art in increasingly costly and complex patent cases. However, the order recently disappeared from the Federal Circuit’s website without much explanation. [Update: The Federal Circuit Website has been updated to explain that Model Orders advanced by … Continue reading this entry