IP Law Bulletin

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.

The District of Massachusetts recently issued something of a legal unicorn;¹ it granted a plaintiff’s motion to strike two of the defendant’s affirmative defenses. This uncommon result offers some insight into the importance of careful pleading.

On June 12, 2017, the U.S. Supreme Court granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC to decide whether the AIA (America Invents Act) patent review program for challenging the validity of issued patents is constitutional. Specifically, the Court will decide the question of “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 without a jury.”

The Supreme Court held in Matal v. Tam that the Lanham Act’s provision forbidding the registration of disparaging trademarks is unconstitutional in violation of the First Amendment. The Court explained that “[s]peech may not be banned on the ground that it expresses ideas that offend.”

While the Supreme Court’s decisions in Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Management System, Inc. significantly relaxed the standard for awarding attorney fees under 35 U.S.C. § 285, a recent decision by the Federal Circuit provides a reminder of the limits to a district court’s discretion. In Checkpoint Systems, Inc. v. All-Tag Security S.A., the Federal Circuit found that the district court abused its discretion in awarding fees to All-Tag because Checkpoint’s conduct relied upon by the district court did not render the case exceptional.

According to a recent Supreme Court decision, when it comes to the applicability of patent exhaustion, “restrictions and location are irrelevant; what matters is the patentee’s decision to make a sale.” In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court confirmed that the authorized sale of a patented article by a patentee exhausts all patent rights in that article, even where the patentee and the buyer agree to post-sale restrictions on the use and resale of the article. The Court also held that the authorized sale of a patented product abroad triggers patent exhaustion, just as a sale in the U.S. does.

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.

If you’ve filed for patents in any industry – be it biotech, high tech, manufacturing, or another sector altogether – you’ve likely been faced with a decision on whether to file a “continuation” application at the US Patent and Trademark Office (USPTO). In simple terms, a “continuation” application is a new patent application allowing one to pursue additional claims based upon the same description and priority date(s) as a pending “parent” application. Continuation applications are a flexible tool, useful for furthering numerous business objectives.

The Hon. F. Dennis Saylor, IV of the U.S. District Court for the District of Massachusetts recently denied a petitioner’s request under 28 USC § 1782 to take discovery related to patent inventorship in connection with an Opposition proceeding pending before the European Patent Office (EPO). The court, in exercising its discretion under the U.S. Supreme Court’s so-called Intel factors set forth in Intel Corp. v. Advanced Micro Devices, Inc., 542 US 241, 264 (2004), denied the petitioner’s request for discovery because the EPO generally does not allow the type of discovery requested by the petitioner in an Opposition proceeding, thus the petitioner’s requested discovery would have no place in an EPO Opposition.

Key Takeaways

• This case illustrates the need for inventors to be familiar with patent laws, procedures, and proceedings in foreign jurisdictions.
• The District of Massachusetts will focus on Intel’s discretionary factors when making decisions about whether to allow discovery for use in foreign tribunals under 28 USC § 1782.