On Jan. 8, 2018, the Federal Circuit issued its significant en banc decision in Wi-Fi One, LLC v. Broadcom. In that decision, the Federal Circuit held that the time-bar of 35 U.S.C. §315(b) is reviewable on appeal, thus overturning a prior panel decision and opening the door for parties to challenge how the USPTO has interpreted and applied that statutory provision.
This article examines the impact of TC Heartland with a focus on recent Federal Circuit decisions applying TC Heartland and further clarifying the scope of where patent cases may be filed.
There Was No Clear Majority at Oral Argument Signaling the Death of Inter Partes Review
November 27 was supposed to be the big Patent Trial and Appeal Board (PTAB) showdown at the U.S. Supreme Court. After two hours of questioning, it seemed more like a big bust.
Federal Circuit Affirms Finding That Rembrandt's Patent Is Not Infringed by Apple's Accused Products
District Court Transfers Case after Federal Circuit Ordered It to Reconsider Party's Venue Objections In Light of TC HeartlandJanuary 01, 2018Jeffrey S. Ginsberg and Hui Li
On Nov. 13, 2017, a Federal Circuit panel of Chief Judge Prost, Judge Mayer, and Judge Chen issued a unanimous decision in Promega Corp. v. Life Technologies Corp. On remand from the United States Supreme Court, the panel affirmed a grant of judgment as a matter of law by the United States District Court for the Western District of Wisconsin that the plaintiff failed to prove its infringement case under §§35 U.S.C. 271(a) and 271(f)(1). The panel affirmed the district court's denial for a new trial on damages and infringement, and reaffirmed its prior holdings on enablement, licensing, and active inducement issues.
Written opinions of counsel are gaining renewed interest as a valuable tool to limit liability for willful patent infringement. A patent opinion that is competently written by a registered patent attorney sets forth the factual and legal basis for finding a patent not infringed, invalid, and/or unenforceable. However, to be effective, the timing of the rendered patent opinion may be critical.
Federal Circuit Resolves Circuit Split, Finds That Venue Is Not Waived Under Rule 12(h)(1)(A) for Cases Brought before TC HeartLand
Federal Circuit Reverses Award of Lost Profits Because Product Sold to a Single Customer Was an Available Non- Infringing Alternative
Venue in patent cases lies "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." Since 1990, the Federal Circuit interpreted the term "resides" coextensively with the general venue statute such that patent venue lay where the defendant was subject to personal jurisdiction. But this year, the Supreme Court greatly narrowed that definition in TC Heartland v. Kraft Foods. The Federal Circuit, in turn, interpreted the newly-relevant alternative phrase. After two decades of relaxed patent venue rules, these decisions work a seismic shift in patent litigation.
After Several IP-Heavy Seasons, the 2017 Term At the U.S. Supreme Court Looks to Be a Quiet One for Intellectual Property — with One Big Exception
The 2017 term at the U.S. Supreme Court looks to be a quiet one for intellectual property. But with one potential bang in the middle.
Federal Circuit: Collateral Estoppel Can Apply to Patents With Claims Similar To Those in Previously Litigated
Federal Circuit Uses 'Rule of Reason' To Determine Patent Owner Had an Early Reduction to Practice
