This week, the Federal Circuit resolved three issues left in TC Heartland’s wake. TC Heartland held that 28 U.S.C. § 1400(b) uniquely governs venue in patent cases and is not coterminous with the scope of § 1391. The first prong of § 1400(b) creates venue in the judicial district where the defendant resides, which the Supreme Court held to be the state of incorporation for a domestic corporation. But, this begs the question: what about when the state has multiple judicial districts? Also, whose law governs burden under § 1400(b), and where does that burden lie? In the year after TC Heartland, district courts across the country split on these issues. Continue Reading Updates in the Federal Circuit Following TC Heartland
Congress’ passage of the America Invents Act (AIA) in 2011 created a new process for challenging the validity of issued patents. This new process is filed with the very governmental agency that originally issued the patent. Called Inter Partes Review (IPR), hundreds of issued patents have been invalidated, in whole or in part, using the new proceeding. On April 24, 2018, the Supreme Court handed down two decisions directly relating to IPRs. In the first, it upheld the IPR process as constitutional. In the second, it provided additional direction to the Patent Trial and Appeals Board (“PTAB”), which oversees and decides IPRs. Continue Reading Supreme Court Rules on Two Cases involving Inter Partes Review
On March 22, 2018, the President issued a Presidential Memorandum in which he announced the actions the United States will take in response to China’s allegedly unfair trade practices found by the Office of the United States Trade Representative (USTR) in its Section 301 investigation of China’s Acts, Policies, and Practices Related to Technology Transfer, Intellectual Property, and Innovation. The actions are as follows:
Choosing a common or trendy name for your startup opens your company to risk. You might like the name “Company XYZ,” and you might think you’re the “Company XYZ” of your field, but “Company XYZ” might disagree with you. If you are looking to choose a brand or product name, you need to think about trademarks earlier than you think.
On February 23, 2018, in In re Silver, the Supreme Court of Texas conditionally granted mandamus relief and vacated the trial court’s order compelling production of emails between an inventor and his non-lawyer registered patent agent. In re Silver, Case No. 16-0682, 2018 WL 1022470 (Tex. February 23, 2018). The court held that a client’s communications with a patent agent, made to facilitate the agent’s provision of authorized legal services to the client, are privileged under Texas Rule of Evidence 503 (attorney-client privilege). The ruling marked the first time a state high court weighed in on the issue.
The influence of the Internet of Things (IoT) will undoubtedly be transformational with a total potential economic impact estimated to be $3.9 trillion to $11.1 trillion a year by 2025. In the race into the IoT marketplace, there are both known and unknown legal hurdles that will affect those who offer of goods and services during the proliferation of the Internet of Things.
Some of the current and potential legal hurdles related to the IoT are well known, some are not, and some are the result of the intersection between the physical and virtual worlds, and the collision between two intersecting major drivers of innovation in IoT. On one hand, there are the established manufacturers of products and consumer goods whose expertise in developing, testing and manufacturing products puts them in an advantageous position. On the other hand, there are the technology companies who are used to developing software and whose expertise lies in software development, data collection, and data processing. Continue Reading Hurdles the Internet of Things Must Clear for Manufacturers and Providers
On January 10, 2018, the Federal Circuit added Finjan, Inc. v. Blue Coat Sys., Inc., No. 2016-2520 (Fed. Cir.), to its Enfish jurisprudence and upheld the subject matter eligibility of a software patent directed to virus-scanning downloadable app code for known and suspected malware. As construed, the invention claims novel behavioral-based analysis of source code to identify; detection of potentially dangerous files results in creation of a new file attached to the app code which is then evaluated by the destination computer to determine whether to allow the app to be downloaded. Continue Reading Federal Circuit “Blue Coat” Decision: Virus-Scanning Software Survives Alice Attack Applying “Enfish”
Inter Partes Review (IPR), created by the Leahy-Smith America Invents Act (AIA), 125 Stat. 284 (2011), has become a prominent part of patent litigation. Accused infringers can challenge asserted patents based on printed prior art by petitioning the Patent Trial and Appeal Board (PTAB) to “institute” an IPR “trial.” An IPR before the PTAB is an administrative proceeding with no right to a jury trial on patent validity. If instituted, non-Article III judges receive evidence and arguments and determine whether the patent is valid. Many IPRs arise out of pending District court patent infringement litigation and parties to an IPR proceeding can be estopped from re-litigating issues that were raised or could have been raised in the PTAB. At the discretion of the federal judge, district court litigation may be stayed pending the outcome of the IPR. Ultimately, IPRs can be less expensive than district court validity determinations and often contribute to efficient resolution of patent disputes. Continue Reading Will “Oil States” Upend IPRs?
Husch Blackwell is proud to be a sponsor of Milwaukee Startup Week 2017. This series of events showcases the entrepreneurial spirit of Southeast Wisconsin and provides opportunities for startups to showcase their ideas, network with fellow innovators, and attend workshops with business, marketing, and legal experts. Husch Blackwell is sponsoring the Startup Showcase by Startup Milwaukee event on November 7, 2017. The showcase will provide local entrepreneurs the opportunity to present their products and services at the City Lights Brewing Company. Additionally, Husch Blackwell will have attorneys present on legal issues that affect startups during the Launch Conference on November 9, 2017, and other events throughout the week.
For many new companies, coming up with a unique name is not easy. As a result, companies often fall back on the family name of one of the founders as an easy and identifiable way to enter the marketplace. Companies may now want to rethink that approach given the U.S. Patent and Trademark Office’s (PTO’s) new examination guidelines for trademarks incorporating surnames.