On June 22, the Supreme Court issued its opinion in WesternGeco LLC v. ION GeoPhysical, which addresses the ability of a patent owner to collect lost profits from sales abroad for infringement under 35 U.S.C. § 271(f)(2). Under this subsection of the Patent Act, it is an act of infringement to supply components of an invention to be combined overseas in an infringing device. The Court—in a 7-to-2 decision—held that lost profits are available from foreign sales for a patent owner who proves such infringement.
Nutter lawyers Heather Repicky and Alison Casey recently contributed an article to IPWatchdog that addresses changes in Massachusetts local patent rules. In the article, “What You Need to Know About the District of Massachusetts’ New Local Patent Rules,” Heather and Alison discuss how the new set of rules aims to make the Commonwealth a more attractive venue for patent litigation by streamlining patent cases. Please contact the authors if you’d like to learn more about this topic.
Since the Supreme Court’s decision in Alice Corp. v. CLS Bank in 2014, there has been an increasing trend in district courts granting pretrial dispositive motions to effect early dismissal of patent infringement cases under 35 U.S.C. § 101. Last month, however, the Federal Circuit issued two patent-friendly decisions that preclude such early dismissal when there are factual disputes that underlie the ultimate legal conclusion of patent eligibility under 35 U.S.C. § 101.
The District of Massachusetts is poised to overhaul its local patent rules with the objective of making the Commonwealth a more attractive venue for patent litigation. The new proposed rules aim to streamline patent cases by focusing on efficiency, reaching outcomes more quickly, and achieving consistency across the entire bench. The prior version of Local Rule 16.6 acted more like a guide, suggesting issues that the parties should consider and offering a template for a schedule. That template, however, was not mandatory and resulted in a case-by-case approach by both the bench and the bar. In contrast, the proposed local patent rules require a schedule that, absent extraordinary circumstances, will apply. In addition, the proposed rules bring this district in line with several other courts around the country that have adopted patent-specific rules.
In a stinging decision that will impact its patent portfolio, Arthrex recently suffered a setback in a patent dispute over suture anchors with Smith & Nephew. The Federal Circuit upheld a PTAB judgment entering adverse judgment against claims 1-9 of Arthrex’s U.S. Pat. No. 8,821,541, which S&N challenged in a 2016 IPR. This decision will affect the related patent portfolio because of the estoppel provisions of 37 CFR 42.73.
The Federal Circuit rejected the patent venue test recently established by Judge Rodney Gilstrap of the Eastern District of Texas, the judge who has been reported to preside over about one quarter of all patent infringement cases in America. The three judge panel held that Judge Gilstrap abused his discretion and applied an incorrect legal standard in Raytheon Co. v. Cray Inc. when he refused to transfer the patent suit after applying his own four-factor test and determined defendant Cray maintained “a regular and established place of business” in the district where only one of its employees worked from home. As a result of its findings, the Federal Circuit ordered the case to be transferred.
Written opinions of counsel are gaining renewed interest as a valuable tool for avoiding enhanced damages for willful patent infringement following the Halo decision. A written opinion may set forth the factual and legal basis for finding a third party patent not infringed, invalid, and/or unenforceable. However, to be effective, the timing of the opinion may be critical.
For declaratory judgment (DJ) actions concerning patents, whether a patent owner’s conduct is sufficient for there to be a real and immediate controversy is the usual jurisdictional hurdle. In BASF Plant Science, LP v. Nuseed Americas Inc., a District of Delaware court recently examined a different issue–who must be named as a defendant to support DJ jurisdiction when there is an exclusive patent licensee.
In a recent decision denying defendants’ motion for Rule 11 sanctions, the District of Massachusetts interpreted its local rule regarding the district’s filing deadline. The decision gives guidance to litigators regarding the use of the court’s electronic filing system.
- Despite the fact that no Local Rule for the District of Massachusetts expressly addresses the question of after-hours electronic service, the 6:00 p.m. filing deadline provides a “useful—and sensible—analogy for timeliness of electronic service.” Service on opposing parties should generally be filed by 6:00 p.m. of the due date.
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.