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Wouldn’t it be a great world if people innovated for the sake of innovating, spending every waking moment in the pursuit of solutions and inventions that would better mankind? Wouldn’t it be a great world if investors, the top 1% and the richest corporations would invest hundreds of millions of dollars, even multiple billions of dollars, and fund the many years of arduous work from large teams of scientists and engineers necessary to achieve paradigm shifting innovation? In such an idealized…
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Luckily for Apple and Microsoft, however, VirnetX did not assert the ‘135 patent against Mangrove Partners, a hedge fund, which filed a petition for IPR against the ‘135 patent on April 14th, 2015; Mangrove reportedly shorted VirnetX stock around this time. On October 7th, 2015, the PTAB panel adjudicating the case decided to institute the IPR as the petitioner Mangrove had demonstrated a reasonable likelihood of proving invalidity of the challenged claims. Then in January 2016, Apple was…
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For the last 20 years, manufacturers have used 3D printing to build prototypes, but it was only recently that this industrial technology entered the mainstream. The 3D printing of products can enable faster time-to-market, save money, mitigate risk and allow manufacturers to customize a component to suit customer needs. 3D printing can produce individual, specifically tailored parts on demand. Boeing printed an entire plane cabin in 2013 and Ford can manufacture vehicle parts in four days that…
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By Andrew Williams — On November 27, 2017, the Supreme Court will hear arguments in two cases that were ultimately appealed from IPR Final Written Decisions issued by the PTAB. The first of these, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, will analyze whether IPRs (and presumably other post-issuance proceedings) are constitutional. Specifically, the sole question to be considered by the Court is: 1. Whether inter partes review––an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents––violates the Constitution by extinguishing private property rights through a non-Article III forum…Continue Reading ...
Micron won on the 12(g)(2) issue, which gives some guidance to district courts,
BUT the venue matter is not over, so there is still uncertainty in this area:
But that waiver rule [12(g)(2)], we also conclude, is not the only basis on
which a district court might reject a venue defense for
non-merits reasons, such as by determining that the
defense was not timely presented. A less bright-line,
more discretionary framework applies even when Rule
12(g)(2) and hence Rule 12(h)(1)(A) does not. We grant
the petition, vacate the order, and remand for consideration
of forfeiture under that framework.
The CAFC in Micron stated as to FRCP 12(g)(2):
We find this case to present special circumstances justifying
mandamus review of certain basic, unsettled,
recurring legal issues over which there is considerable
litigation producing disparate results. After the Supreme
Court decided TC Heartland, corporate defendants in
many pending patent cases newly presented venue objections
under 28 U.S.C. § 1400(b), asserting lack of residence
in the judicial district where the case was filed. In
many of those cases, the timing of the venue objection
presented a question about waiver under Rule 12(g)(2)
and (h)(1)(A)—in particular, whether TC Heartland
effected a change of controlling law such that the Rule
12(h)(1)(A) waiver rule was inapplicable. The district
courts have deeply split on the answer. All of that is
made clear in the district court’s decision in this case, so
we need not multiply citations. Harvard, 2017 WL
3749419, at *3–4.
Answering the fundamental change-of-law question
regarding the applicability of Rule 12(g)(2) and (h)(1)(A)—
as well as the equally fundamental question whether
those provisions provide the only basis for finding that a
defendant can no longer make a venue objection—is
important to proper judicial administration. Doing so
would reduce the widespread disparities in rulings on the
fundamental legal standards, while leaving the exercise of
such discretion as is available in applying those standards
subject to case-by-case review. In these circumstances,
we think that mandamus is a proper vehicle for considering
the fundamental legal issues presented in this case
and many others.
The meaning of the word “available” arises:
Accordingly, the Rule 12 waiver question presented
here is whether the venue defense was “available” to
Micron in August 2016. We conclude as a matter of law
that it was not. The venue objection was not available
until the Supreme Court decided TC Heartland because,
before then, it would have been improper, given controlling
precedent, for the district court to dismiss or to
transfer for lack of venue.
This is a common-sense interpretation of Rule
12(g)(2). Where controlling law precluded the district
court, at the time of the motion, from adopting a defense
or objection and on that basis granting the motion, it is
natural to say, in this context, that the defense or objection
was not “available” to the movant. The law of precedent
is part of what determines what law controls. The
language “was available” focuses on the time of the motion
in the district court, not some future possibility of
relief on appeal, thus pointing toward how the district
court may permissibly act on the motion at the time—i.e.,
where the motion is for dismissal, whether it can dismiss
the case and thereby avoid wasting resources on continued
litigation. Because what Rule 12(g)(2) addresses is
the omission of a defense or objection from an initial
motion for one of the forms of relief specified in the Rule,
subsection (g)(2) is naturally understood to require the
availability of that relief at the time of the initial motion
(here, dismissal based on improper venue). That understanding
is supported by the purpose of Rule 12(g)(2),
which is to consolidate defenses and to promote early
resolution of such issues. See Fed. R. Civ. P. 12 advisory
committee notes (1966) (“[Rule 12(g)’s] required consolidation
of defenses and objections in a Rule 12 motion is
salutary in that it works against piecemeal consideration
of a case.”); see also id. (“Amended subdivision (h)(1)(A)”
specifies waiver of available defenses not raised in a preanswer
Rule 12 motion because “[a] party who by motion
invites the court to pass upon a threshold defense should
bring forward all the specified defenses he then has and
thus allow the court to do a reasonably complete job.”).
This reading is also supported
by the instruction stated in Federal Rule of Civil Procedure
1—that the Rules “should be construed, administered,
and employed by the court and the parties to secure
the just, speedy, and inexpensive determination of every
action and proceeding.”
No decision of the Supreme Court or a circuit court to
which we have been pointed runs counter to this commonsense
interpretation.3 The rationale for this interpretation,
moreover, is consistent with the general approach,
which is neither rigid nor context-independent, that is
reflected in opinions from the Supreme Court and the
circuit courts in various settings—i.e., a sufficiently sharp
change of law sometimes is a ground for permitting a
party to advance a position that it did not advance earlier
in the proceeding when the law at the time was strongly
enough against that position. See, e.g., Blonder-Tongue
Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 350 (1971)
Of “V.E. Holding”:
patent-specific issue of the proper interpretation of 28
U.S.C. § 1400(b), the district court was bound by this
court’s precedent. See In re Cray, 871 F.3d at 1360 (“Federal
Circuit law, rather than regional circuit law, governs
[the] analysis of what § 1400(b) requires.”); see also Foster
v. Hallco Mfg. Co., Inc., 947 F.2d 469, 475 (Fed. Cir.
1991); Panduit Corp. v. All States Plastic Mfg. Co., Inc.,
744 F.2d 1564, 1573 (Fed. Cir. 1984). Circuit-court precedent
is binding on district courts notwithstanding the
mere possibility that the Supreme Court might come to
disapprove that precedent. See Eulitt ex rel. Eulitt v.
Maine, Dep’t of Educ., 386 F.3d 344, 349 (1st Cir. 2004).
It does not appear, indeed, that Harvard disputes those
This court held in V.E. Holding Corp. v. Johnson Gas
Appliance Co., 917 F.2d 1574, 1575 (Fed. Cir. 1990), that
the 1988 amendments to 28 U.S.C. § 1391(c) furnished a
definition of “resides” that applied to § 1400(b). In so
ruling, this court recognized that the Supreme Court had
held in Fourco Glass Co. v. Transmirra Products Corp.,
353 U.S. 222, 229 (1957), that the then-current version of
§ 1391(c) did not apply to § 1400(b); but this court concluded
that the 1988 amendments to § 1391(c)—which of
course were not before the Court in Fourco—produced a
different statutory prescription. V.E. Holding, 917 F.2d
at 1579–80. Under the 1988 version of § 1391(c), a corporate
defendant was “‘deemed to reside in any judicial
district in which it [wa]s subject to personal jurisdiction
at the time the action [wa]s commenced.’” Id. at 1578
(quoting statute). It is undisputed that Micron comes
within that broad definition.
The crucial holding of V.E. Holding was that
§ 1391(c)’s definition of “resides,” after the 1988 amendments,
applied to § 1400(b). On that crucial point, there
is no substantial argument for distinguishing the 2011
amendments to § 1391(c) from the 1988 amendments that
V.E. Holding addressed. Indeed, we so held in In re TC
Heartland LLC, 821 F.3d 1338, 1341–43 (Fed. Cir. 2016),
rev’d on other ground, 137 S. Ct. 1514 (2017), and the
Supreme Court in TC Heartland did not disturb that
Thus, if V.E. Holding is taken as a binding precedent,
§ 1391(c)’s current definition of “resides” applies to
§ 1400(b). It follows that controlling precedent, which the
district court here was bound to follow, would plainly
have barred the district court from adopting a venue
objection had Micron made one before the Supreme Court
decided TC Heartland.
In this case, the district court considered whether to
excuse what it found to be a Rule 12(h)(1)(A) waiver but
did not consider whether Micron lost its right to assert
the absence of venue on grounds separate from Rule
12(h)(1)(A). We remand for the court to consider any such
properly raised non-Rule 12(h)(1)(A) arguments that
Micron has forfeited its venue defense and, if there are no
such sound arguments, to consider the merits of venue
under § 1400(b).
FOOTNOTE: Dennis Crouch at PatentlyO has an interesting take on
Although the court [CAFC] is absolutely correct that its approach is the common-sense approach since we have been operating under the old rule for decades. However, the major analytical problem with the court’s decision here is its notion that its misinterpretation of Supreme Court law is somehow “controlling” law. Rather the Supreme Court decided the identical issue in Fourco (1957) and then in TC Heartland (2017) held the minor amendments made to the guiding statutes did not alter the holding of Fourco. In other words, the “controlling law” this entire time has been the Supreme Court precedent. Supreme Court writes:
The issue in this case is whether [the amendment to the statutes] supplants the definition announced in Fourco and allows a plaintiff to bring a patent infringement lawsuit against a corporation in any district in which the corporation is subject to personal jurisdiction. We conclude that the amendments to §1391 did not modify the meaning of §1400(b) as interpreted by Fourco.
Regardless of this technicality, the rule appears now that district courts should be considering and granting improper venue decisions moving forward.
In passing, the IPBiz post
is related to what Dennis is saying.
Is a district court free to interpret Supreme Court precedent in a way that is completely negated by a holding of the regional circuit?
UPDATE, from DocketReport on 17 Nov 2017:
Omission of Venue Challenge From First Rule 12(b) Motion Precludes Defendant From Invoking Intervening Change of Law to Excuse Waiver
The court denied defendant’s motion to dismiss or transfer plaintiff’s consolidated patent infringement actions for improper venue because defendant waived its venue defense. “It is well settled that an improper venue defense is waived if it is not included in ‘a responsive pleading or in an amendment allowed by Rule 15(a)(1) as a matter of course.’ [Defendant’s] Motion to Dismiss the Complaint in [the first action] did not raise a defense of improper venue. The defense was therefore waived. . . . Even if the TC Heartland decision was an intervening change in law, the ‘omission of improper venue from [a party]’s first 12(b) motion constitutes a “procedural misstep,”‘ which precludes a party from ‘”invok[ing] intervening Supreme Court case law” in order to “correct” it.’. . . As to [defendant’s] venue challenge in [the second action], [defendant] has already admitted that venue is proper. It may not now ‘take back’ this admission or otherwise seek to avoid its effects.”
Nichia Corporation v. VIZIO, Inc., 2-16-cv-01453 (TXED November 15, 2017, Order) (Gilstrap, USDJ)
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Trade ministers negotiating the Trans-Pacific Partnership agreement have released the list of provisions they have suspended, including a range of articles related to intellectual property rights, such as patentable subject matter, test data protection…Continue Reading ...
Gene Quinn: Predicting Oil States In Advance Of SCOTUS Oral Arguments Stuart Duncan Smith: Legislation To Curtail Sovereign Immunity In IPR May Be On The Way Jo Dale Carothers: USPTO Finalizes Rule For Privileged Communications In Trials Before The PTAB Procedural Bait And Switch: Withdrawn Rejections As Undesignated New Grounds In Examiner’s Answers Mark Schultz: […]Continue Reading ...
$$ Accordingly, it is possible to set FT1 and FT2 and thereafter derive s1, s2, s4 and s5. / したがって、FT1及びFT2を設定でき、その後でs1、s2、s4及びs5を導くことができる。(USP8294977)
$$ The mass spectrum shown in FIG. 7A was obtained after 5 s of continuous operation. / 図７Ａに示すマススペクトルは、５秒間連続で動作させた後で得られた。(USP8153960)
$$ This additional damping can be added simply as a "software patch" after the problem has been discovered–a further potential cost saving. / この追加の減衰は、問題が発見された後で、単に「ソフトウェアパッチ」として追加することもできる。これはさらなる潜在的なコスト節約である。(USP8061677)
$$ This may be wound into the device before the lid is attached to the cassette and the cassette sealed. / これを装置内に巻き込んだ後で、蓋をカセットに取り付け、カセットを封止することができる。(USP8201556)
$$ The signal to be cancelled obtained using the above mentioned considerations is inverted and scaled before being again replicated. / 前記した要件を使用して得られたキャンセルすべき信号は反転およびスケーリングするされた後で再度複写される。(USP7577260)
$$ This aspect of the preferred embodiment will be described in more detail below. / 上記好ましい実施形態のこの態様を後でより詳細に説明する。(USP7622711):below
$$ Other aspects of the invention are as described and claimed below. / 後で開示し、また特許請求の範囲に記載したように、本発明の他の態様もある。(USP7319673)
$$ This is discussed further below. / これは後でさらに詳しく記載する。(USP6775249)
$$ The receipt of replies will be described below. / 応答の受信に関しては後で説明することにする｡(USP6336135)
$$ The cloth of the present invention can be manufactured and caused to set at will any time later by the addition of the liquid, e.g. water. / 本発明の布地を製造して、液体、例えば水の添加によって思い通りにいつでも後で固化させることができる。(USP8343609)
$$ Such forms of protection signal will be described later. / 防止信号の形式については後で説明する。(USP8160423)
$$ Further aspects of the development program will be considered later. / 該開発プログラムのさらなる態様が後で検討される。(USP7565281)
$$ Suitable values of c will be discussed later. / ｃの適切な値は後で論じる。(USP6809514)
$$ The production of these parameters will be explained later. / これらのパラメータの生成は、後で説明される。(USP6671666)
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In re Micron Tech., Inc.: Nov. 15, 2017. Before Taranto, Chen, Hughes. Takeaway: As a matter of law, the venue objection was not available to Petitioner until the Supreme Court decided TC Heartland because before then, given controlling precedent, it would have been improper for the district court to dismiss …Continue Reading ...
by Dennis Crouch In re Micron (Fed. Cir. 2017) On writ of mandamus, the Federal Circuit has sided with accused-infringer Micron – holding that TC Heartland was a sufficient change in the controlling law of venue to overcome the fact venue-challenge had been previously waived in the case. My sense is that this is quite poor analysis opinion, but the […]Continue Reading ...
It’s hard to escape the watchful eye of the internet – it will follow you through life. But if something put on the internet about you is wrong, misrepresents you or even endangers you, should you have a right to remove it from the internet? A new paper from the Inter-American Dialogue in Washington, DC […]Continue Reading ...
The United States Copyright Office has issued a reminder to all online service providers and agents that they must renew their registration with the office by end of year in order to claim liability limitations from copyright infringing content.Continue Reading ...
The UN International Telecommunication Union (ITU) today released its annual report on the global information society, this year providing detailed analysis of the transformational “revolution” underway involving the Internet of Things, big data, cloud…Continue Reading ...
WASHINGTON – Today, over seventy international copyright law experts called for NAFTA and other trade negotiators to support a set of balanced copyright principles. The experts urge trade negotiators to support policies like fair use, safe harbor provisions, and other exceptions and limitations that permit and encourage access to knowledge, flourishing creativity, and innovation. Signatories include preeminent intellectual property professors and experts from law schools, think tanks, and public interest organizations in the U.S., Canada, and Mexico, as well as Argentina, Australia, China, Ireland, and Switzerland.Continue Reading ...