323-660-9916 info@tsircoulaw.com

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...

McRO, Inc. v. Bandai Namco Games America: In Support of Software Patent Eligibility

This month the Federal Circuit reversed a district court decision regarding the patent eligibility of software that automatically animates lip-synching of characters in video games. The district court had previously held that the subject matter of the patent were directed at ineligible subject matter, however, in their reversal in McRO, Inc. v. Bandai Namco Games America, the Federal Circuit fleshed out how eligibility standards set forth in Alice apply to software-related patents. In Alice, the Court applied a two-step framework for analyzing whether claims are patent eligible. First, whether the claim at issue is “directed to” a judicial exception, such as an abstract idea. Second, whether the claims contain an “inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.” In this case, the Court decided the case under step one of the analysis, namely, that the claims of the patents-in-question were not directed to an judicial exception, such as an abstract idea. Thus, step two was not needed. More particularly, the patents in question (U.S. Pat Nos. 6,307,576 and 6,611,278) involved the automation of animating lip-synching of characters in video games. Previously, the process of animating lip-synching was conducted by individual artists who entered in values and movements of the character manually. This was a process largely dictated by the artist’s subjective judgment and creative input. The patent at issue relied on a rules-based method to automate the process of entering the movements and values. At the district court, the patent was found invalid because the claims merely added the use of rules, rather than artists, to compile and enter values and movements. The...

Accelerated Examination Possibly Coming to a Halt

Recently the USPTO has begun to hint one of the avenues of patent examination may be due for a change, the Accelerated Examination process. Initially billed as something that would help streamline and expedite the patent examination process, Accelerated Examination is slowly losing favor with the public as the patent environment continues to evolve. The USPTO has signaled it will soon take public comments as to whether the Accelerated Examination process should continue to exist altogether. The process of Accelerated Examination was essentially having the patent applicant do some of the heavy lifting of the patent examination process for the examiner. The applicant needed to file the patent application with pre-examination search documents along with an examination support document (ESD), which is supposed to detail all US, and foreign patent documents having to do with the claimed invention. Essentially, the patent applicant would have to submit their own research into prior art that could potentially limit claims in the patent. At first glance this process seemed to be serving its intended purpose. Average wait time before first action in an Accelerated Examination case was just 4.9 months, compared to an average of 18.4 months in all other cases. However in practice this process was not as beneficial as it seemed. One of the major issues with the Accelerated Examination process was the ESD. The search results and research into prior art could be used against the patent holder after the patent had been granted as ammunition to contest its validity. Patent applicants pursuing this process were essentially asked to submit their own costly and labor-intensive prior art searches that...

Brexit: And its Effect on IP Rights

On June 23rd the United Kingdom (UK) voted to leave the European Union (EU), a move now commonly referred to as the “Brexit”. With their exit from the EU, the UK will now have to renegotiate a long list of rules, regulations, and treaties that were formally governed under the EU regime. How this process of renegotiation affect intellectual property rights in the UK and the EU depends on the exact type of right, and how unified the protection of that right was throughout the EU member nations. To begin, the process of leaving the EU will take two years from the time UK leaders invoke Article 50, beginning the process of a member nation leaving the Union. As of current, Art. 50 has not been invoked, so the two year clock on unwinding the relationship between the UK and EU has not yet begun. With this being the case, any IP rights that were governed by institutions of the EU, unified over all of the member nations, will continue to be in-force. However it is these exact rights, the ones that are governed by EU regulations, which will be the most effected by Brexit. Patents: The European Patent Office (EPO) currently governs patent law in the EU. This is an institution made up of both member and non-member nations to the EU, so the UK’s exit from the EU will not effect its membership in the EPO. The European Patent Convention (executed by the EPO) allows for a European Patent (EP), which itself is not a single patent, but a bundle of patents that an inventor may obtain...

The Drone Took My Secrets: Trade Secret Law in the Age of Drones

The concern over drone technology seems to be a ubiquitous worry in society these days. From near collisions with commercial aircraft at large international airports, or impeding fire-dropping aircraft from operating out of fear of collision, to simple privacy concerns over potential spying flying cameras, there is many issues that drones raise, and we are only in the infancy of the technology. However one overlooked area has been the interaction of drones with a little discussed area of intellectual property protection, trade secret law. Trade secret law is a form of intellectual property protection without the use of trademarks, copyrights or patents. This term was brought into public discussion when in 2014 Elon Musk announced he was relying on this form of protection for his sensitive corporate information rather than patents (most of which he has given to the public domain). How trade secret law works is fairly simple: The Uniform Trade Secret Act (UTSA) says in order to be a “trade secret” information must not be publically available, and the business must make reasonable efforts to keep said information confidential. State laws define trade secrets similarly by using language like “reasonable security procedures and practices to protect the information from unauthorized access.” In essence, if someone steals information that is not public, and you have taken efforts to keep it that way, that person is liable. However, once the information is not a secret anymore, the egg is already broken, it cannot become “secret” again, and anyone taking that information is not liable. This brings us to the strange convergence with drones. A case that helped outline the...