By Tara Muller
In a much-anticipated ruling on May 22, 2017, the U.S. Supreme Court in TC Heartland v. Kraft Foods narrowed the definition of venue for patent infringement cases. Until last week, a patent holder could sue an alleged infringer in any venue where the defendant was doing business, causing forum shopping and a very high concentration of patent cases in plaintiff-friendly venues like Eastern District of Texas. Roughly 40 percent of infringement suits, many filed by non-practicing entities, have been filed in ED TX in the last two years. Now, however, patent enforcers must file suit in the judicial district in which the corporate defendant “resides” (meaning state of incorporation) or where it has committed alleged acts of infringement AND has a regular and established place of business. Experts predict TC Heartland will increase the cost of litigation and drastically end forum shopping. They forecast a flood of litigation into other states, including Delaware, where so many companies incorporate, or tech-sector states like California and New Jersey.
Possible? Sure, but litigators are a clever bunch when they put on their thinking caps. If they found work-arounds to the America Invents Act, they may just find creative ways to stay in their favorite jurisdiction, perhaps by shifting their focus from producers to sellers and retailers.
By Art MacCord
Art MacCord is a patent attorney with 38 years of experience. He keeps an eye on the U.S. Patent and Trademark Office and the U.S. Copyright Office for new rules and practice tips of interest to intellectual property attorneys. Please click on the links below for the most recent updates.
Copyright Office Proposes Rule to Modernize Document Recordation
USPTO Seeks Comments on Possible New Streamlined Procedure for Cancellation of Trademark Registrations
By Courtney Dabbiere and Allison Dobson
Under 35 U.S.C. § 325(d), the Patent Trial and Appeal Board has the discretion to deny a follow-on inter partes review petition where multiple petitions are filed against the same patent. In exercising its discretion, the board may consider whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Additionally, the board may consider several factors “including the facts of each case, the burden on the parties and the Board, and the public interest.” See Polygroup Ltd. v. Willis Elec. Co., Ltd., No. IPR2016-00801, Paper No. 8, at 14 (P.T.A.B. Oct. 17, 2016). While the board’s decisions granting and denying follow-on petitions depend on the circumstances of the case, there are several factors petitioners and patent owners can use to assess the likelihood of the board exercising its discretion. We studied the reasoning for grant or denial of 120 follow-on petitions and report our findings here.
The board will typically decline to exercise its discretion when (1) a petition presents new prior art and/or arguments that are substantially different from the previously relied on art and/or arguments; (2) a different petitioner is challenging the previously challenged claims; (3) a petition challenges claims not previously challenged; or (4) the prior petition was denied without substantive evaluation of the prior art or its applicability to the challenged claims, such as when a proceeding is terminated prior to receiving an institution decision or a final written decision, or when the board denied the previous petition without addressing the merits of petitioner’s arguments. The board may also decline to exercise its discretion when the board has instituted proceedings between the same parties on the same or substantially the same grounds because there will be little additional burden to the parties and the board.
Dear IP Section Members:
We are seeking additional volunteers to draft posts for the NCBA Intellectual Property Law Blog. Please electronically forward any submissions to us at MMorlock@kilpatricktownsend.com and LaAnderson@wcsr.com.
Posts can be short and can address any topic related to recent developments in IP Law. Some suggestions include:
- Analysis of recent Federal Circuit Decisions
- Analysis of recent Oral Arguments at the Supreme Court that impact IP Law, e.g., TC Heartland LLC v. Kraft Foods Group Brands LLC
- Analysis of any of the post-grant decisions that the PTAB has identified as precedential
- How Examiners are treating Federal Circuit decisions on 35 U.S.C. 101
These are just suggestions, and you are not limited to these topics. Please let us know if you have an idea for a topic, or have a completed post you would like to submit for publication.
Michael Morlock, newsletter co-editor
Lauren Anderson, newsletter co-editor
By Katherine Escalante
Can you put a value to a certain smell? Play-Doh thinks so. In February, Hasbro, Inc. filed its application for the scent of Play-Doh. Scent has a powerful way of evoking particular emotions in consumers. We all have a scent that brings us back to a cherished memory — something unique to our experiences growing up. While I can admit that Play-Doh has a distinct scent, I could never quite tell you what it smelled like. To me Play-Doh smelled like… well… Play-Doh.
The fragrance itself is described as a “unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.” While it is rare for a scent to be trademarked in the United States, it is not unheard of. The first scent to be trademarked was a floral fragrance “reminiscent of Plumeria blossoms” used on yarn in 1990. Consumers tend to view unusual features of a product as a way to make it stand out from the others, not to designate who made it, placing a heavy burden on those that want to trademark scents.
Please note that the Hilton Riverside in Wilmington is currently full. We have obtained rooms near by at the Courtyard Marriott. Please make your hotel reservations by clicking here. If you haven’t signed up for the Annual Meeting/CLE you can do so by clicking here. This is a great program with a variety of top-notch speakers!
Join us the night before at Elijah’s Restaurant for a joint reception with Sports & Entertainment Law Section (guests welcomed). Click here to rsvp! See you next month in Wilmington!
By Art MacCord
Art MacCord is a patent attorney with 38 years of experience. He keeps an eye on the U.S. Patent and Trademark Office and the U.S. Copyright Office for new rules and practice tips of interest to intellectual property attorneys. Please find his most recent link below.
U.S. Copyright Office launched its updated website: www.copyright.gov
By Art MacCord
Art MacCord is a patent attorney with 38 years of experience. He keeps an eye on the U.S. Patent and Trademark Office and the U.S. Copyright Office for new rules and practice tips of interest to intellectual property attorneys. Please find his most recent links below.
Copyright Office Technical Amendments To Regulations: Final Rule
Copyright Office Interim Rule To Implement the FOIA Improvement Act of 2016