- Posts by Paul J. CroninPartner
Paul J. Cronin is a partner in Nutter’s Litigation and Intellectual Property Departments and a member of the firm’s IP and Patent Litigation practice group. His practice focuses on trial work in cases involving patents ...
On May 22, the U.S. Supreme Court issued an important and long-awaited Opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC, a case that centered on where a patent infringement suit can be filed. In a resounding 8-0 decision, the Supreme Court put an abrupt end to the decades-old practice of forum shopping in patent cases.
For almost 30 years, patent venue law allowed patent owners to file infringement suits in federal judicial districts in which the accused infringer is subject to the district court’s personal jurisdiction. This flexibility opened the doors to a patent owner’s home court and to distant courts that are perceived to be friendly to patent owners. Observers believe that this flexibility was being abused, especially by non-practicing entities or “patent trolls.” Non-practicing entities generate revenue by licensing and enforcing their patents as opposed to making or selling their own products.
On March 27, 2017, the U.S. Supreme Court heard oral argument in TC Heartland v. Kraft, a case that centers on where patent infringement lawsuits can be filed.
- If the Supreme Court sides with TC Heartland, patent infringement hotbeds like the Eastern District of Texas would likely see a drastic reduction in filings because cases would be limited to the state of incorporation of the defendant, or where the defendant has committed acts of infringement and has a regular and established place of business.
- Because many corporations select Delaware as their state of incorporation, a ruling in favor of TC Heartland would likely cause a sharp increase in patent infringement filings in that district.
- Switching the heavy patent infringement case load from the Eastern District of Texas to the District of Delaware will not solve TC Heartland’s concern about one judicial district handling a disproportionate majority of patent infringement cases.
- If the Supreme Court sides with Kraft Foods, the status quo will be maintained and patent owners will have flexibility in selecting venue for infringement actions.
Q: Why is the technology industry following TC Heartland v. Kraft so closely?
Paul Cronin: The Supreme Court recently agreed to take up TC Heartland, a case that will address the issue of where patent infringement lawsuits can be filed. The tech industry wants the Supreme Court to end the practice of “forum shopping,” or filing lawsuits in venues that are historically favorable to patent owners. The technology industry wants the law changed so patent infringement lawsuits must be filed in the accused infringer’s state of incorporation or where its headquarters is located. If this change occurs, “home court” advantage will shift from the patent owner to the accused infringer. Software, smart phones, and other technology companies have been among the hardest hit in terms of fighting patent litigation. The industry is looking to shut down the patent-friendly venues by forcing patent owners to file suit in the home district of the accused infringer.
Summary: The USPTO announced a year-long program aimed at reducing the backlog of pending ex parte patent appeals. An ex parte patent appeal is an appeal to the Patent Trial and Appeal Board typically made by applicants after receiving a final rejection from an examiner and failing to reach agreement on the allowability of the patent application. Currently, the average time to receive a final decision on an ex parte appeal is between 2 to 3 years. Under the new program, an applicant/appellant can have one appeal finally decided within 6 months of entering the program if the applicant willingly withdraws a second appeal. The applicant can contemporaneously file an RCE for the withdrawn appeal to keep the subject matter of the application alive.
Giles Rich, the former Chief Judge of the Federal Circuit, once famously stated that “the name of the game is the claim.” Meaning, the patent claims themselves define the scope of the property right held by a patent owner. However, three recent Federal Circuit decisions may be shifting the spotlight away from the claims alone and shining a light onto the patent as a whole. The cases, Lexington Luminance v. Amazon.com, Fenner Invs., Ltd. V. Cello P’ship, and Pacing Tech. LLC, v. Garmin Int’l, Inc., place a stronger focus on the specification in the first instance—above even the plain meaning of the claims.
The general proposition that the courts should look to the intrinsic evidence (i.e., the specification, the figures, and the prosecution history) is not new. For example, in Phillips v. AWH Corp. the CAFC stated that the claims “are generally given their ordinary and customary meaning” as understood by persons skilled in the field of invention. The Phillips decision also stated that, in addition to looking at the plain meaning of the claims, the specification and the prosecution history may be consulted to ascertain the meaning of the claims. In Lexington Luminance, Fenner, and Pacing Tech., however, the CAFC appears to take this one step further.
The U.S. Supreme Court issued two landmark decisions reversing existing Federal Circuit precedent on the fees that can be awarded to the prevailing party in exceptional patent infringement cases. Both cases involved the interpretation 35 U.S.C. § 285, which is the patent statute for awarding attorney fees to the prevailing party “in exceptional cases.” In Octane Fitness, LLC v. Icon Health & Fitness, the Supreme Court was asked to review the substantive standard for awarding attorney fees pursuant to Section 285. In Highmark Inc. v. Allcare Health Management System, Inc., the litigants asked the Supreme Court to review the standard of review of Section 285 on appeal. Both cases were argued in February.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.