Category Archives: Patents

Venue Stays the Same in Patent Cases

By Matthew M. Lubozynski

iStock_000019576650LargeThe Federal Circuit recently made an important ruling concerning the proper venue for patent infringement suits.  The decision by the Federal Circuit did not change the current interpretation of the venue statutes and companies will continue to be brought into court in such locations as the Eastern District of Texas, despite having minimal contacts with such locations.

In re TC Heartland LLC, — F.3d —, 2016 WL 1709433 (Fed. Cir. Apr. 29, 2016), the Plaintiff, Kraft Foods Group Brands LLC, brought a patent infringement suit against Defendant, TC Heartland LLC (“Heartland”), in the United States District Court for the District of Delaware.  Heartland moved to dismiss the case or transfer venue to the Southern District of Indiana.

In support of its motion, Heartland argued that it is an Indiana limited liability company with its headquarters in Indiana.  Id. at *1.  Heartland further argued that it had a minimal presence in Delaware, including that it was not registered to do business in Delaware, and that only 2% of sales of the Continue reading

Steve Hall and Matt Williams quoted in Louisville Business First on the current state of Intellectual Property Law

Steve Hall and Matt Williams, members of Wyatt’s Intellectual Property Protection & Litigation Service Team, were quoted in Louisville Business First.  The article, “Intellectual Property Law Has a Real-World Impact on Businesses,” describes changes in Intellectual Property Law and their effect on companies and individuals alike.

Please click here to read the full article.

Steve Hall quoted in The Lane Report on Intellectual Property Protection

Steve Hall, an experienced patent lawyer and litigator, and member of Wyatt’s Intellectual Property Protection & Litigation Service Team, was recently quoted in the February 2016 issue of The Lane Report.  The article, “Many Options to Protect Intellectual Property,” draws upon the knowledge of local experts in the field and describes various ways to ensure a company’s intellectual property is protected.

Please click here to read the full article.

Congress Fails to Enact New Patent Reform

By Matthew M. Lubozynski 

On December 18, Congress adjourned for the year without enacting any new patent legislation.  This is despite the fact that late in 2014, members of Congress stated that patent reform was a priority for the 114th Congress, and particularly for 2015.  Many commentators believed that significant patent reform was likely for 2015.  This appeared to be the case as, in 2014, new patent legislation had made it out of the House of Representatives but was ultimately killed in the Senate.  Then, at various times throughout 2015, at least 4 bills, (1) The Innovation Act (H.R. 9) (the one previously killed in the Senate in 2014); (2) The TROL Act (H.R. 2045); (3) the STRONG Patents Act (S. 632); and (4) the PATENT Act (S. 1137), were introduced in either the House or Senate dealing with some aspect of patent reform.  However, no law has gone into effect and it now appears that the momentum for patent reform that was prevalent early in 2015 has subsided and there are questions as to whether patent reform will even take place in 2016.

The last major patent reform happened in 2011 with the America Invents Act.  However, prior to that, there had been over 50 years since any substantive patent reform.  With the Supreme Court continuing to take more patent cases and the continued presence of non-practicing entities, a.k.a. “trolls,” it will be interesting to see whether patent reform will be at the top of Congress’ priorities in 2016, as it appeared to be at the beginning of 2015.

 

Glen Reid obtains victory for WCM Industries, Inc. in patent infringement case

Glen Reid, member of Wyatt’s Intellectual Property Protection & Litigation Service Team, served as co-counsel in WCM Industries, Inc.’s recent patent infringement case.  The company was victorious in a jury trial.  A story about the case, entitled “IP Trial an Unusual Victory: Fierce competitors go to trial over IP rights,” appeared in the November 16th issue of Law Week Colorado.

Divided Infringement Broadened

By Matthew M. Lubozynski

The Federal Circuit issued an important en banc ruling in August expanding what can constitute direct infringement of a method claim when one actor does not perform all of the elements of the claim at issue. See Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. Aug. 13, 2015) (“Akamai II”). This concept is referred to as “divided infringement” or “joint infringement.” Previously, if a single actor did not perform all of the steps of the claim, that actor could only be liable for direct infringement if the accused infringer was found to be the “mastermind,” exercising direction and control over the other entities such that the actions could be attributed to it. See Akamai Technologies, Inc. v. Limelight Networks, Inc., 786 F.3d 899, 904 (Fed. Cir. May 13, 2015) (“Akamai I”). “Direction or control” for such a finding was very narrow and the Federal Circuit had stated that this would be satisfied in instances where the “law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party . . . [and] may occur in a principal-agent relationship, a contractual relationship, or in circumstances in which parties work together in a joint enterprise functioning as a form of mutual agency.” Id. at 904-905. This previous standard essentially excluded from infringement any instance where a customer performed any of the steps of a claim in a method patent.

The Supreme Court recognized the narrow scope the Federal Circuit had circumscribed for direct infringement and invited the Federal Circuit to revisit this standard. See Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2120 (2014) (“Our decision on the § 271(b) question necessitates a remand to the Federal Circuit, and on remand, the Federal Circuit will have the opportunity to revisit the § 271(a) question if it so chooses.”). The Federal Circuit took the Continue reading

Laches Remains Patent Infringement Defense…For Now

By Will Gibbons

Defense attorneys often rely on the legal defense of laches when faced with a claim of patent infringement. This defense bars recovery when a party claims legal injury but unreasonably delays in pursuing the claim in a way that prejudices the opposing party. The laches defense has come under close examination in the SCA Hygiene Products v. First Quality Baby Products, Inc. case. 1

The facts giving rise to the case began when SCA, the patent holder, suggested in a 2003 letter to First Quality, its competitor in the adult incontinence market, that First Quality products were infringing on one of SCA’s patents. After exchanging letters for several years, SCA filed suit in 2010, alleging patent infringement. The District Court granted the defendant’s motion for summary judgment primarily under laches grounds.

Then, in a ruling previously discussed on this blog, a three-judge panel of the Federal Circuit affirmed the grant of laches as a defense to patent infringement. This came despite the Supreme Court’s 2014 holding in Patrella v. Metro-Goldwyn-Mayer, Inc. 2 that laches cannot be invoked to bar a claim for copyright infringement. In light of the Patrella ruling, the Federal Circuit vacated its SCA Hygiene Products ruling on December 30, 2014, ordering an en banc hearing of the court, meaning Continue reading