• Lack of Jurisdiction Flatlines Pulse’s Appeal

    Author: Razi Safi* Editor: Lily Robinson The Federal Circuit in Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 16-2006 (May 26, 2017) held that it lacked jurisdiction under 28 U.S.C. §§ 1295(a)(1) and 1292(c)(2) to hear an appeal from a district court’s order regarding prejudgment interest because it was not a “final decision.” The district court […]

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  • Is the Supreme Court’s venue decision in TC Heartland anti-patent?

    The TC Heartland decision strikes me as more anti-business than it is anti-patent. In the wake of the Supreme Court’s decision all patent owners will now be forced to seek remedy for patent infringement where the defendant is incorporated or where the infringing defendant has a significant place of business. In other words, all patent owners will in theory have to fight patent infringement disputes against domestic corporations on the home turf of the infringer… It also seems unlikely that TC…

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  • Supreme Court Finds Patent Rights Exhausted Overseas

    In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court reversed the en banc decision of the Federal Circuit, and held U.S. patents rights exhausted by the patent owner’s sale of a patented article anywhere in the world. The Court recognized a patent owner’s ability to impose restrictions through licensing arrangements, but emphasized that patent…… Continue reading this entry

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  • Viveve, Inc. v. Thermigen, LLC (E.D. Tex. 2017)

    District Court Denies Motion to Dismiss for Lack of Patent Eligible Subject Matter By Donald Zuhn — Earlier this year, in Viveve, Inc. v. Thermigen, LLC, District Judge Rodney Gilstrap of the U.S. District Court for the Eastern District of Texas denied the Motion to Dismiss Pursuant to Fed. R. Civ. P. 12(b)(6) and 35 U.S.C. § 101 filed by Defendants Thermigen, LLC; ThermiAesthetics, LLC; and Dr. Red Alinsod, M.D. (“Thermigen”). In denying Thermigen’s motion, the District Court determined that the patent asserted by Plaintiff Vivive, Inc. against Thermigen is not directed to a natural law or phenomenon. In October…

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  • Conference & CLE Calendar

    June 6, 2017 – “Patent Prosecution: FTO Opinions, Examiner Interactions, Patent Drafting and More” (Strafford) – 8:30 am to 5:30 pm (EDT) June 6, 2017 – “The Decline in Research: Should We Worry?” (The Center for Innovation Policy at Duke Law) – 11:15 …

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  • -BASED



    $$ The lead-based ceramic material used within the detector elements is relatively easy to process and the associated manufacturing technology is ma…

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  • Potential Implications of Supreme Court’s Patent Exhaustion Decision Leaves Uncertainty for Patent Owners

    Author: Kevin D. Rodkey Editor: D. Brian Kacedon In Impression Products v. Lexmark International, No. 15-1189 (S. Ct. May 30, 2017), the Supreme Court reversed the Federal Circuit’s en banc decision that patent owners may enforce post-sale restrictions that are clearly communicated to purchasers of patented products and that international sales do not exhaust U.S. patent rights. In […]

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  • REGISTER NOW! The Global Debate On Intellectual Property, Trade And Development: Past, Present and Future

         REGISTER NOW   The University of Minnesota Law School, The Faculty of Law, University of Geneva, and the Centre for International Governance Innovation are pleased to present  The Global Debate on Intellectual Property, Trade and Development: Past, Present and Future A Conference in Honour of Pedro Roffe University of Geneva, Uni Bastions, Room B106 Located at De-Candolle […]

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  • TC Heartland: Good for Patent Litigation?

    In TC Heartland v. Kraft Food Group Brands, a recent opinion, the US Supreme Court decided to restrict the meaning of the patent venue statute.  This statute essentially provides in which judicial district a defendant may be sued for patent infringement.  The patent specific statute, 13 USC 1400(b), provides: “[a]ny civil action for 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.”  The US Supreme Court had to analyze whether “where the defendant resides” means “where the defendant is in incorporated” per a previous US Supreme Court case analyzing that provision, or according to subsequent amendments by Congress to the general venue statute which has a much broader definition of what “resides” means.  Ultimately, the US Supreme Court in a unanimous Associate Justice Thomas opinion (Associate Justice Gorsuch not participating) decided to adopt the more restrictive definition: “resides” means where the defendant is incorporated. 

    Practically, many believe that this decision is another attempt to restrict “abusive” patent litigation or patent troll behavior by directing litigation out of the Eastern District of Texas to other districts—interestingly perhaps to districts that may be more favorable to accused patent infringers.  One concern about patent infringement generally has been the competence of judges and juries to address technical and complicated patent cases.  Notably, the Eastern District of Texas has handled a large number of patent cases for many years and arguably the judges have developed technical and legal competency in patent cases.  Indeed, this could explain why the district handles patent cases relatively quickly.  Arguably, we’ve now made a policy decision pushing cases away from a competent district to those that are not.  However, some cases presumably may now be brought in districts in California or Delaware (where a large number of corporations are incorporated), which may also have developed competency in handling patent cases.  I have been told that juries in some districts in California are quite technically sophisticated—such as in the Northern District of California where Silicon Valley is located.  Perhaps one benefit of TC Heartland may be better juries; although remember how the Apple v. Samsung jury was criticized.  

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  • Abusing Discretion on Attorney Fees

    In its 2014 attorney-fee decisions of Highmark and Octane Fitness, the Supreme Court handed back discretion to lower courts to determine when the “exceptional case” requirement for fee shifting had been met.  Going with that discretion, the Supreme Court ruled also ruled that deference should be given to the determination when appealed. Interestingly, the two […]

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  • Some Harvard students learn that problematic social media posts can lead to reversal of college admission

    A post at the Harvard Crimson by Hannah Natanson, titled Harvard Rescinds Acceptances for At Least Ten Students for Obscene Memes discusses a problematic issue at Harvard University.

    A subgroup of Harvard’s official class of 2021 facebook group launched some questionable topics, with the sub-group chat people asking that students in the larger group post provocative memes to the larger group in order to get into the smaller subgroup. Harvard officials got wind of this, and 10 once admitted Harvard students became un-admitted. The larger group, comprising around 100 members, was set up in December 2016, with this group constituting about 5% of the students admitted to the class of 2021.

    The post Harvard withdraws 10 acceptances after ‘offensive’ memes in online chat contained the text:

    This spring, 2,056 students were invited to join Harvard’s incoming freshman class, drawing from a record number of applications — 39,506, according to a university news release. Nearly 84 percent of the admitted students eventually chose to enroll at Harvard, the highest yield rate in several decades.

    The university’s decision to rescind the students’ acceptance to Harvard underscores the dangers of social media posts — public or private — among prospective college students. According to Kaplan Test Prep, which surveyed more than 350 college admissions officers, 35 percent of admissions officers said they check social media sites like Facebook, Twitter and Instagram to learn more about applicants. About 42 percent of those officials said what they found had a negative impact on prospective students.

    “For better or worse, social media has become an established factor in college admissions, and it’s more important than ever for applicants to make wise decisions,” Yariv Alpher, executive director of research at Kaplan Test Prep said.

    The repercussions spurred both praise and criticism from Harvard students, alumni and others at a time when university campuses across the country are in the midst of clashes over free speech. Some felt the decision was justified, while others expressed a belief that admissions officers crossed a line by judging students for their private conversations.

    Of some relevance to the Trump “head” matter, the article in the Crimson had text:

    She [Luca] added, though, that if memes sent over the chat posed any kind of threat to members’ lives or well-being, then she believed administrators’ actions were justified.

    Other members of the Class of 2021 said they strongly supported the Admissions Office’s decision. Zhang wrote that she thought the students’ actions were indefensible, and that the administration was correct in choosing to penalize those who posted obscene images.

    “I appreciate humor, but there are so many topics that just should not be joked about,” Zhang wrote. “I respect the decision of the admissions officers to rescind the offers because those actions really spoke about the students’ true characters.”

    “I do not know how those offensive images could be defended,” she added.

    A post at the Washington Post mentions other groups, including one with an interesting “pharma-famous” member:

    By early March, there were more members of the Harvard meme group than Harvard undergraduate students. The group now has nearly 30,000 members — including “pharmabro” Martin Shkreli, the former Turing Pharmaceuticals executive who became known as “Pharma Bro” after he dramatically boosted the price of a drug.

    link: https://www.washingtonpost.com/news/morning-mix/wp/2017/06/05/harvard-withdraws-10-acceptances-for-offensive-memes-in-private-chat/?utm_term=.bda1c4d165c5

    See also the 2015 IPBiz post
    Some facts on Daraprim (Pyrimethamine)

    ***Of a different matter at Harvard, involving Computer Science 50, see the post
    A flood of high-tech plagiarism , including the text:

    And at Harvard, where Computer Science 50 is practically its own brand, with T-shirts, slickly produced videos and an online audience of thousands, the class distinguished itself last fall in a more dubious way: According to The Harvard Crimson, more than 60 students were referred to the university’s honor council, a committee that reviews allegations of academic dishonesty, such as plagiarism, and violations of the honor code.

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  • CAFC reverses ED Texas and finds "for" award of attorneys fees; "this suit should never have been filed"

    Defendant-appellant ADS prevailed at the CAFC, with an ED Tx decision against attorneys fees REVERSED and remanded.

    The review was under an “abuse of discretion” standard, of which the CAFC noted:

    An abuse of discretion occurs when, inter alia, the district court
    “base[s] its ruling on an erroneous view of the law or on a
    clearly erroneous assessment of the evidence.” Highmark
    Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744,
    1748 n.2 (2014) (internal quotation marks and citation
    omitted). “A factual finding is clearly erroneous if, despite
    some supporting evidence, we are left with the definite
    and firm conviction that a mistake has been made.” Insite
    Vision Inc. v. Sandoz, Inc., 783 F.3d 853, 858 (Fed. Cir.
    2015) (internal quotation marks and citation omitted).


    A district court
    abuses its discretion when, as here, it “fail[s] to conduct
    an adequate inquiry.” Atl. Research Mktg. Sys., Inc. v.
    Troy, 659 F.3d 1345, 1360 (Fed. Cir. 2011).

    The concluding paragraph of the CAFC decision:

    This suit never should have been filed, and ADS
    deserves to be fully compensated for the significant attorneys’
    fees it has incurred. To hold otherwise would only
    “encourage the litigation of unreasonable [and] groundless
    claims.” Highway Equip. Co., Inc. v. FECO, Ltd., 469
    F.3d 1027, 1035 (Fed. Cir. 2006); see also Octocom Sys.,
    Inc. v. Hous. Computer Servs., Inc., 918 F.2d 937, 943
    (Fed. Cir. 1990) (“Where a party blindly disregards long
    established authority and raises arguments with no
    factual foundation . . . the judicial process has not been
    used, but abused.”).

    link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2521.Opinion.6-2-2017.1.PDF

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  • Federal Circuit Issues Two Precedential Opinions on Recovery of Attorneys’ Fees

    In two decisions handed down this morning, the U.S. Court of Appeals for the Federal Circuit reversed district court decisions on the recovery of attorneys’ fees in patent cases.  As readers may be aware, under 35 U.S.C. § 285 U.S. courts may award the prevailing party in a patent matter its attorneys’ fees only in “exceptional” cases.  In Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014), the U.S. Supreme Court held that courts should consider whether a case is “exceptional” based on the totality of the circumstances and on the preponderance of the evidence; and in Highmark Inc. v. Allcare Health Management System, Inc., 134 S. Ct. 1744 (2014), the Court held that the standard of review on appeal is “abuse of discretion.”  Highlighting the fact-specific nature of the inquiry, in the first case fr0m this morning, Rothschild Connected Devices Innovations, LLC v. Guardian Protected Services, Inc., the court (in an opinion by Judge Wallach, joined by Chief Judge Prost and Judge Mayer) concluded that it was an abuse of discretion to deny a request for attorneys’ fees in a case in which the plaintiff moved to voluntarily dismiss its complaint for infringement of U.S. Patent No. 8,788,090, for a “[a] system and method for creating a personalized consumer product.”  According to the panel, the district court “clearly erred by failing to consider [plaintiff’s] willful ignorance of the prior art” (p.8). In addition, according to the panel, “in the absence of evidence demonstrating that [plaintiff] engaged in reasonable conduct before the District Court, the undisputed evidence regarding [plaintiff’s] vexatious litigation warrants an affirmative exceptional case finding here” (p.11).  (According to the defendant, plaintiff “has asserted claim 1 of the ‘090 patent in fifty-eight cases against technologies ranging from video cameras to coffeemakers to heat pumps,” and “has settled the vast majority, if not all, of these cases for significantly below the average cost of defending an infringement lawsuit” (id.).  Finally, the district court “improperly conflated” Federal Rule of Civil Procedure 11, which provides a “safe harbor” under which a litigant can withdraw a challenged allegation within 21 days without incurring sanctions under that rule, with the standard for an “exceptional” case under § 285 (p.12).  Judge Mayer added a separate concurring opinion, stating that the plaintiff’s complaint “was frivolous on its face,” and that its “continued assertions that its patent extends to products simply because they are configured using the Internet . . . are risible rather than simply unreasonable” (concurring opinion p.2).  Judge Mayer would find claim 1 unpatentable for lack of patentable subject matter (concurring opinion p.3).

    By contrast, in the other opinion, Checkpoint Systems, Inc. v. All-Tag Security S.A., the panel (in an opinion by Judge Newman, joined by Judges Lourie and Moore) concludes that the court abused its discretion by awarding fees, in a case involving U.S. Patent No. 4,876,555, which the court describes as relating to “improved anti-theft tags that are attached to merchandise, and deactivated when the goods are purchased” (p.2).  The panel concludes, among other things, that contrary to the district judge’s opinion there was no “harassment or abuse” on the part of the plaintiff in this case, and that “[t]here was no representation by [defendant] that the accused products were different from” the products tested by the plaintiff’s expert” and “no allegation of falsity or fraud or bad faith on the part of [plaintiff] or its expert witness” (pp. 7-8).

    Again, given the fact-specific nature of the inquiry, it’s probably not appropriate to read too much into these two contrasting opinions.  Still and all, given the deferential standard of review, it’s unusual to see two cases in one day both finding an abuse of discretion with regard to a fee award, with the abuse of discretion tending in different directions in the two cases.  
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