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T.C. Heartland L.L.C. v. Kraft Food Brands, L.L.C: Proper Patent Venue

On May 2017, the Supreme Court handed down one of the most significant patent law decisions of the last several years in T.C. Heartland L.L.C. v. Kraft Food Brands, L.L.C. This case directly impacts the proper venue in which to bring patent infringement cases, and therefore could drastically change the landscape of patent litigation as it stands. The main crux of this case dealt with the conflicting language between 28 U.S.C. §1400 and §1390. Pursuant to § 1400(b), a “patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” Pursuant to § 1391(c), a corporation is deemed to be a resident of “any judicial district in which such defendant is subject to the court’s personal jurisdiction…” A Federal Circuit case in the 1990’s, VE Holding Corp. v. Johnson Gas Appliance Co., held that §1391(c) applied to patent infringement actions. At this same time Congress amended the general venue statute of §1391(c) to read: “[f]or purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.” The practical affect of this was to curb the pervasive practice of venue shopping in patent infringement cases. Certain districts, such as the Eastern District of Texas, have become famous for their overwhelmingly high number of patent infringement cases, expert judges, and specially designed local rules to create a quicker patent docket. Despite the defendants in these cases...

Design Patents and Damages

Design patents have recently found a prominent place in the news, being the basis of infringement in much publicized Apple v. Samsung. While this is an important piece of intellectual property protection, the contours of damages that can be sought based on infringement of a design patent can be confusing and easily misunderstood. Below is an outline of what damages can be sought for infringement of a design patent. Statutory Provisions Granting Damages Damages for infringement of a design patent can be found in both 35 U.S.C. §284 (the standard damages provision for all patents) as well §289 (the damages provision specifically for design patents). The standard patent damages provision of §284 allows the patent holder to recover no “less than a reasonable royalty for the use made of the invention by the infringer.” In practical terms, this refers to the patent holder’s lost profits; that is, but for the infringement, how much money would the patent holder have made. Upon a finding of willfulness, the judge is able to multiple this damage award by 3x. The design patent damage statute of §289 however speaks directly to allowing the patent holder to recover the infringer’s profits. Statute §289 states an infringer “shall be liable to the owner to the extent of his total profit, but not less than $250”. The Federal Circuit has ruled that a patentee can collect either of these damages theories, but not both. [Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277 (Fed. Cir. 2002)] Apportionment of Profits When making an accounting of an infringer’s profits under §289, there is a key question about...

Patent Marking Guide

Patent marking, or the act of displaying the patent number on the product sold containing patented claims, is crucial for maintaining rights and allowing for full recovery against infringers. This is because “[a patentee] is entitled to damages from the time when it either began marking its product in compliance with section 287(a) [i.e. providing constructive notice], or when it actually notified [the accused infringer] of its infringement, whichever [is] earlier.” [American Medical Sys., Inc. v. Medical Eng’g Corp., 6 F.3d 1523, 1537, 28 USPQ2d 1321, 1331 (Fed.Cir.1993)] While “actual notice” is self-explanatory in this case, “constructive notice” will be found when there is proper patent marking. That is why knowing how and what to mark with your patent number is crucial to maintaining your patent rights.   1) Basics       The relevant statues state that ““Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation ‘pat.’” Ie: “Patent No. 8,000,000” or “Pat. 8,000,000” This patent must be fixed to the product it is associated with. However, if fixing the patent number on the product “cannot be done” it may be affixed to the packaging. A key point to recognize is that affixing patent marking to the packaging of a product will only be seen as proper marking if affixing it to the product itself “cannot be done”. This means that the shape or composition of the product makes it...

Amazon Taking On Counterfeiters

In November of 2016 Amazon filed lawsuits against counterfeiters and infringers for the first time in its 20-year history. This follows on the heels of Amazon’s announcement in August of 2016 that they would be stepping up enforcement measures against counterfeit sellers. This move towards enhanced enforcement has been increasingly called for by Amazon users, both purchasers and sellers, who had to deal with a growing problem of counterfeit sellers with little to no recourse for addressing the issue.   Amazon’s problem with counterfeit sellers is nothing new, and has been growing in the last years. Many large retailers such as Apple, NFL, and Birkenstock have refused to sell their products through Amazon because of the inability to control counterfeit sellers of their items. To address this issue Amazon began taking increased enforcement measures in 2016, starting with an announcement in August. Amazon announced they would be stepping up fees for retailers who desire to sell brand-name products. For example, if a retailer seeks to sell Adidas, Nike, or Hasbro products they are required to pay between $1,000-1,500 non-refundable fee. This is in attempt to foil fly-by-night counterfeit seller operations, which usually open for a short time to sell counterfeit products, but disappear as soon as any complaints arise. No exact list of brands requiring said fees has been released, but it is safe to say Amazon is taking increasing efforts to restrict sales of products only through authorized retailers. While this is welcomed news to brands, this could be a serious impediment to third-party resellers who made their money from retail arbitrage, reselling products purchased a wholesale or...

GIFs and Copyright: With Money Comes the Laws

GIF’s, or short looping video clips, ubiquitously populate the Internet and have quickly become a new form of communication unto themselves. Usually these short looping videos borrow clips from popular television shows, movies, or video of cultural figures, or in other words, copyright protected materials. For the most part copyright holders of these borrowed-from properties have ignored the possible infringements of these GIFs because most are seen as “fair use” (not to mention the sheer volume to police). A key element of “fair use” however is the commercial nature of the work in question. Up until now the vast majority of GIFs created by individuals were not commercial in nature, however that may be beginning to change with a $72 million round of funding raised this week by the Internet’s main GIF creating and search engine GIPHY. GIFs just became big business, and with money always come laws. When assessing whether something is protected under “fair use” four factors are looked at: 1) Amount and substantiality of the portion taken; 2) Purpose and character of your use; 3) Nature of the copyrighted work; and 4) Effect of the use upon the potential market. GIFs are normally seen as “fair use” because of a few key features. First, they are usually very short, favoring fair use because a very unsubstantial portion of the larger copyrighted work is used. Second, the purpose of the GIFs is usually satirical or parodic, favoring fair use because the meaning is different than that of the original work. Third, the nature of GIFs is normally to alter the original video in some way, (looping, speeding...