Status Quo at the PTO: High Court Preserves Inter Partes Review

Kaminski_Jeffri_LRFeatured Expert Contributor, Intellectual Property—Patents

Jeffri A. Kaminski, Venable LLP

Inter Partes Review (“IPR”) lives to see another day (or challenge). On April 24, 2018, the Supreme Court issued its opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which could have wholly invalidated the IPR process used by the Patent and Trademark Office (“PTO”) to scrutinize the validity of already-issued patents. Though not the first constitutional challenge to IPR, Oil States marks the first time the Supreme Court has confronted the issue head-on since IPR came into existence five years ago. Continue reading “Status Quo at the PTO: High Court Preserves Inter Partes Review”

Bigger than a Bread Box? Defendants’ Shelf of Equipment Isn’t Enough for Patent Venue

bread boxFor years, patent owners, especially those that have never “performed” the patent, used the U.S. Court of Appeals for the Federal Circuit’s broad interpretation of the patent venue statute to force infringement lawsuits into favorable jurisdictions.  The U.S. District Court for the Eastern District of Texas was the model; often referred to as the “patent district,” patent holders most frequently—and non-practicing entities (aka “patent trolls”) overwhelmingly—filed suit in the Eastern District of Texas, regardless of where the allegedly infringing party conducted business.  Patent trolls leaned on sympathetic (and self-interested) judges to bully easy settlements out of defendants and force end consumers to pay more for all sorts of products. Continue reading “Bigger than a Bread Box? Defendants’ Shelf of Equipment Isn’t Enough for Patent Venue”

“Oil States” Oral Argument: Many Nuances Probed, Little Light Shed on Outcome

Kaminski_Jeffri_LRFeatured Expert Contributor, Intellectual Property—Patents

Jeffri A. Kaminski, Venable LLP

The November 27, 2017 oral arguments in Oil States Energy v. Greene’s Energy Group shed little light on the ultimate fate of inter partes review proceedings (“IPRs”), in which the Patent and Trademark Office (“PTO”) may invalidate an issued patent. As anticipated, much of the discussion focused on whether patents entail public or private rights, but more telling were the justices’ questions emphasizing due-process concerns. Continue reading ““Oil States” Oral Argument: Many Nuances Probed, Little Light Shed on Outcome”

Change in Law of Patent Venue May Not Be Get Out of Texas Card

Kaminski_Jeffri_LRFeatured Expert Contributor, Intellectual Property—Patents

Jeffri A. Kaminski, Venable LLP

In In re: Micron Technology, Inc., the U.S. Court of Appeals for the Federal Circuit resolved a disagreement among various district courts as to when the U.S. Supreme Court’s ruling in TC Heartland LLC v. Kraft Food Group Brands LLC has changed patent venue law.  The Federal Circuit ruled the law had changed, but each federal district court maintains discretion to apply the new rule in accordance with each court’s respective procedures. Continue reading “Change in Law of Patent Venue May Not Be Get Out of Texas Card”

High Stakes for Patent Holders, Challengers in SCOTUS “Oil States” Case

Kaminski_Jeffri_LRFeatured Expert Contributor, Intellectual Property—Patents

Jeffri A. Kaminski, Venable LLP

The U.S. Supreme Court is set to hear arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which could strike a devastating blow to extant patent procedure. On November 27, the Court will consider Oil States’ challenge to the constitutionality of the Inter Partes Review (“IPR”) process used by the Patent and Trademark Office (“PTO”) to scrutinize the validity of already-issued patents. While this is not the first constitutional challenge to IPRs, Oil States marks the first time the Supreme Court will confront the issue. Continue reading “High Stakes for Patent Holders, Challengers in SCOTUS “Oil States” Case”

Third Circuit Antitrust Decision Makes Pharmaceutical Patent Disputes Nearly Impossible to Settle

FTC_Man_Controlling_TradeThe U.S. Supreme Court’s 2013 FTC v. Actavis, Inc. decision held that “reverse payment” settlement agreements—in which a drug company suing a generic competitor for patent infringement pays the alleged infringer a substantial amount of cash to settle the litigation—are subject to antitrust scrutiny.  The Court reasoned that such reverse payments are unusual and may indicate that the generic company is really being paid not to compete.

An August 21, 2017 decision from the U.S. Court of Appeals for the Third Circuit has stretched the Actavis holding far beyond anything intended by the Supreme Court.  If the appeals court’s decision in In re: Lipitor Antitrust Litigation is allowed to stand, it may become virtually impossible for drug companies to settle patent-infringement litigation. Continue reading “Third Circuit Antitrust Decision Makes Pharmaceutical Patent Disputes Nearly Impossible to Settle”

Eastern District of Texas Refuses to Accept Supreme Court’s Patent-Venue Ruling

hydraBy Ryley Bennett, a 2017 Judge K.K. Legett Fellow at Washington Legal Foundation who will be entering her third year at Texas Tech University School of Law in the fall.

The US District Court for the Eastern District of Texas (EDTX) is known as one of the federal judiciary’s most patent-plaintiff-friendly districts. With TC Heartland LLC v. Kraft Food Groups Brand LLC, 137 S. Ct. 1514 (2017), the US Supreme Court recently cut off one avenue for filing patent-infringement claims there. It ruled in that patent-infringement lawsuits may be brought only in the infringer’s home state or else in a federal district where it maintains a regular place of business. But like the resilient, mythical Hydra, when one head is cut off, more grow back. In a recent decision, Eastern District of Texas Judge Rodney Gilstrap developed a broadly-sweeping four-factor “totality” test seemingly aimed at keeping patent-infringement suits in his jurisdiction. Continue reading “Eastern District of Texas Refuses to Accept Supreme Court’s Patent-Venue Ruling”