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The America Invents Act’s creation of patent challenge proceedings to be conducted by the USPTO’s Patent Trial and Appeals Board (PTAB) provided a powerful tool for challenging patent validity outside of costly litigation proceedings. But recent events are changing the strategic advantage that such proceedings may hold for patent challengers.…
The Federal Circuit has rejected Allergan’s ploy to shield its Restasis patents from the scrutiny of inter partes review by assigning them to the St. Regis Mohawk Tribe, finding that tribal immunity does not apply in such proceedings.  The case is Saint Regis Mohawk Tribe, Allergan, Inc., v. Mylan Pharmaceuticals Inc., et al., Case No. 18-1638, July 20, 2018.…
The United States Supreme Court ruled on Friday that a patent owner can, at least in some situations, recover lost profits for the unauthorized use of its patented technology abroad.  The 7-2 decision in WesternGeco LLC v. ION Geophysical Corp. overturned the Federal Circuit’s opinion, which relied on the presumption against extraterritorial application of U.S. law to vacate a jury’s award of $93.4 million in profits that the patent owner would have earned on overseas…
In the third important patent venue decision it has issued in the past week (In re: BigCommerce, No. 2018-122 (May 15, 2018)), the Federal Circuit has clarified the proper location for patent infringement suits against U.S. corporations whose state of incorporation is large enough to have multiple federal judicial districts.  According to the Court, a domestic corporation incorporated in a state having multiple judicial districts ‘resides’ for purposes of the patent-specific venue statute,…
With IPRs here to stay, the USPTO is proposing to drop its BRI standard and interpret claims under the same standards as used by federal courts.  Specifically, the USPTO has proposed to change the standard for interpreting claims in inter partes review, post grant review, and covered business method patent proceedings conducted by the PTAB from the “broadest reasonable interpretation” or “BRI” to the “ordinary and customary meaning” standard applied by federal district courts, taking…
When Allergan assigned its Restasis patents to the Saint Regis Mohawk Tribe last September, so that sovereign immunity could be used to help prevent their invalidation by the Patent Trial and Appeals Board (PTAB), politicians and the public cried foul. This past month, after the PTAB decided that sovereign immunity did not apply and scheduled its final hearing in the matters for April 3, and then refused to stay pending notices of appeal by Allergan…
As reported in our prior blog post, the Federal Circuit appears poised to decide whether a corporation can be sued for patent infringement in any federal district in its state of incorporation.  In a recent order in the Central District of California case of Realtime Data LLC v. Nexenta Systems, Inc., No. 2-17-cv-07690-28 SJO (JCx), the court has addressed the issue pending before the Federal Circuit, and concludes the answer is “no.” “… the Court…
The patent venue statute provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides.”  28 U.S.C. § 1400(b) (emphasis added).  In TC Heartland, LLC v. Kraft Foods Grp. Brands, LLC, 137 S.Ct. 1517 (2017), the Supreme Court held that a corporate defendant resides in the state where it is incorporated, referring to its 1942 decision in Stonite Products Co. v. Melvin Lloyd Co., 315 U.S. 561…
In its May 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands, LLC, 137 S.Ct. 1514 (2017), the Supreme Court shocked the patent world by restricting the range of permissible venues in patent infringement cases for  domestic corporations.  (See our prior posts, here and here).  The Federal Circuit has now found – in its seemingly obvious and “common sense” conclusion in In re Micron Technology, Inc., Case 2017-138 (Fed. Cir. November 15,…
Patents are expensive and should provide value to any company that spends money on them.  There is no single way to value patents, and the value of a patent may change depending on the company’s needs and as products and markets develop.  We offer here a few practical suggestions to value patents and prepare for – or avoid – an expensive patent litigation having all the emotions of a schoolyard brawl. One simple, effective way…