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Q: What are the central issues in Oil States Energy Services v. Greene’s Energy Group?

Rory P. Pheiffer: The central issue is whether inter partes reviews (IPRs) are constitutional as administrative proceedings or if patent invalidity necessarily must be decided in accordance with Article III of the Constitution, and thus must be decided by the judicial branch. The constitutionality inquiry extends further to the Seventh Amendment—whether questions of fact related to patent invalidity should be decided by a jury. An underlying central issue used to support the respective positions for and against IPRs is whether a patent constitutes a private or public right. Oil States, the patentee who is arguing against the constitutionality of IPRs, considers patents to be private property, leaving questions of law and fact for the judiciary and jury, respectively. Greene, on the other hand, considers patents to be a public right, meaning Congress has the power to authorize an administrative body, like the United States Patent and Trademark Office (PTO), to grant patents and conduct IPRs as a mechanism to correct any errors that may have occurred in granting patents.

Earlier this week, the United States Patent and Trademark Office (“PTO”) finalized a new rule, extending the attorney-client privilege to communications between clients and their non-attorney patent agents and foreign practitioners in proceedings before the Patent Trial and Appeal Board. The rule, which largely codifies the Federal Circuit’s 2016 decision in In re Queen’s University at Kingston, will go into effect on December 7, 2017.  

Posted in Patents

In Part 1 of this post, I discussed various advantages of provisional patent applications, which are a growingly popular initial filing option for applicants seeking patent protection.  These advantages include: establishing a filing date without starting the patent-term clock, obtaining additional time (e.g., to study the market, raise funds, etc.), delaying further costs associated with a regular application, delaying examination, and avoiding the need for immediate formalities, among others. 

Yet, despite the numerous advantages of first filing provisional patent applications, there are also various disadvantages that companies and inventors should keep in mind when developing a patent filing strategy and deciding the role of provisional patent applications in that strategy.  Some of these disadvantages are described below.

Posted in Litigation, Patents

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.

Posted in Litigation, Patents

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.

Posted in Patents

September 2017 marks the planned release of the first iteration of the eCommerce Modernization (eMod) Patent Center (“the Alpha Release”), as well as the introduction of new EFS-Web and PAIR features by the USPTO. Effective September 10, features of the recently concluded eMod Text Pilot Program will be rolled out to the public. EFS-Web and Private PAIR users will be able to file structured text via EFS-Web and access structured text submissions and Office Actions via Private PAIR. Additionally, the Alpha Release, which is the next phase of the USPTO’s eMod Project that seeks to improve “the electronic patent application process by modernizing USPTO’s application filing and viewing systems,” will be made available to Pilot Program enrollees. The Alpha Release will include a new user interface and introduce new functionality that the USPTO aims to roll into future iterations of the Patent Center.

Posted in Litigation, Patents

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.

Key Takeaway

  • 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.
Posted in Patents
To File or Not File Provisional Patent Applications – Part 1: The Pros

Since 1995, the United States has allowed patent applicants to file provisional applications as an alternative to filing non-provisional utility patent applications (often referred to as “regular” or “conventional” applications). Provisional applications, which are typically less formal and therefore less expensive to prepare, have become a popular initial filing option for applicants seeking patent protection.1 Yet, despite their popularity, deciding whether to first file a provisional versus a regular, non-provisional application remains a dilemma for many companies and inventors. There is, indeed, more than just initial cost to consider in making that decision.

The following are several advantages you should keep in mind when developing your filing strategy and deciding the role to be played by provisional applications. Disadvantages of provisional applications will be covered in a separate, forthcoming post.

U.S. Supreme Court Halts Forum Shopping In Patent Infringement Cases

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.

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.

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