In McRO, Inc. v. Bandai , the Federal Circuit provided important guidance for determining patent eligibility under 35 U.S.C. § 101 for software and related technology patents, particularly involving computer software processed by general-purpose computers. In a reversal of the decision at the Central District of California, the Federal Circuit concluded that a patent for automated lip-synchronization in computer animation recited “the ordered combination of claimed steps,… More
Category Archives: Patent Litigation
ITC, District Court, PTAB (Oh, My): Managing Triple-Header Patent Litigation
A district court litigation has lots of moving parts all by itself. But add in an IPR and then an ITC Section 337 investigation, and it may become more than the parties can handle. But will the parties agree to stay any of the proceedings? And even if they agree, would any of the tribunals oblige?
The answer, it seems, is that when the parties don’t agree,… More
CAFC Declines to Change Venue Standard
The Federal Circuit panel today rejected TC Heartland’s Petition for Mandamus to direct the United States District Court for the District of Delaware to either dismiss or transfer the patent infringement suit filed against it by Kraft. Heartland had argued that the 2011 amendments to the venue statute have changed the patent venue standard to permitting venue only where a defendant resides or where the defendant allegedly infringes the patent and has a place of business.… More
CAFC Debates a Change in the Venue Standard
AIA trial proceedings, such as IPR’s, provide alternatives to traditional patent litigation, as Scott Kamholz and I discussed in our article “Good, Fast, Cheap Certainty: The Case for Patent Office Litigation,” (recently published in The New York Law Journal). When considering an IPR and/or traditional litigation, factors such as cost, speed and convenience must be considered. On March 11, 2016, the Federal Circuit took up the venue standard in patent litigation —… More
How the FRCP changes affect Patent Litigation
Significant amendments to the Federal Rules of Civil Procedure became effective on December 1, 2015 and include an important change to patent infringement pleading practice and the most notable revisions to the civil discovery rules in years. All attorneys, and particularly patent litigators, should become familiar with these amendments, which apply to all cases pending as of December 1.
Read Foley Hoag’s Intellectual Property Alert for more details.… More
The Cost-Effectiveness of PTAB Proceedings
PTAB litigation is less expensive and faster than the old ways.
An old joke about patent litigation among trial counsel that produces cringes when told to clients is that patent litigation is known as the “sport of kings.” That is because of the great expense of investigating, pleading, discovery, motion practice, expert discovery, pretrial preparation, and trial in a traditional patent case. Like that other sport of kings,… More
How Many Litigated Patents are Actually Subject to PTAB Proceedings?
The current wisdom is that if you are planning to enforce a patent, you should budget to defend the inevitable IPR or CBM. However, a review of the first three years of AIA proceedings suggests that the chance of a litigated patent being challenged in the PTAB is only around 20%. This analysis is from the perspective of individual patents, rather than the number of cases impacted, and so does not directly address multiple assertions of the same patent.… More
Good, Fast, Cheap Certainty
Walter Egbert and I co-wrote “Good, Fast, Cheap Certainty: The Case for Patent Office Litigation,” which was published recently in The New York Law Journal. The article examines the attractiveness of IPR as an alternative to traditional litigation due to its cost and speed advantages, as well as for the certainty it provides to business executives seeking to de-risk intellectual property issues. … More
When Joint Settlement Agreements Do Not Settle
The Patent Trial and Appeal Board’s Discretion To Maintain A Proceeding After Petitioner Termination
Under 37 CFR 42.74, parties to a trial before the Patent Trial and Appeal Board (PTAB) may mutually agree to terminate the proceeding. However, the PTAB is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Patent Office practice irrespective of the parties’ agreement to terminate.… More