Posts Tagged ‘patent litigation’

Judge Gilstrap’s Four-Factor Test

July 10th, 2017 Alexander No comments

U.S. District Judge, Rodney Gilstrap, the country’s busiest patent judge, took a broad stance on what constitutes a company’s place of business in terms of venue. This is a promising signal for patent owners who want to keep their cases in the Eastern District of Texas after the Supreme Court’s decision in TC Heartland.

Judge Rodney Gilstrap created a four-factor test leading his decisions regarding whether cases will remain in the district. This test takes into consideration whether a business has a retail store in the district in addition to the sales revenue the business has generated in the district. However, no single factor carries more weight than another. The test takes into account all of the circumstances of the case.

Since the Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, there has been a new emphasis on the “place of business” requirement of the patent venue statute. In this case, the Supreme Court stated that patent suits can only be filed where the accused patent infringer has an established place of business or where it is incorporated. During the weeks after the TCH Heartland decision, the majority of the district court decisions regarding venue were directed towards whether a defendant waived its arguments by not bringing them up sooner. Judge Gilstrap is the first to create a place-of-business test after the TC Heartland decision.

In developing this test, Judge Gilstrap stated that he gathered factors from other court decisions and modernized them, one of them being a 1985 Federal Circuit case- In re: Cordis Corp. Judge Gilstrap wrote: “Regardless of the area of law, a consistent theme among courts is that the technological advances that foster growth and advancement in today’s business world cannot be ignored.”

The first factor of the test takes into consideration whether a business has a physical presence in the district, such as warehouses and retail stores. If the business has employees or independent contractors there, it will also weigh in favor of the business. The second factor determines the extent to which a business demonstrates that it has a presence in the district. The third factor takes into account the benefits the business receives from its presence in the district, including sales revenue. The fourth and last factor examines a business’s targeted interactions with consumers there, such as localized customer support and marketing techniques.

This test is not binding on other district courts or judges within the district. It has yet to be determined whether other courts will chose to use this test or create a test of their own.

For more information, See Law360.

IP Firms Changing Their Methods

June 5th, 2017 Alexander No comments

Intellectual property boutiques have acclimatized to increased prices and a deceleration in patent cases after two IP firms have closed down.

Professional state that several IP boutiques have effectively adjusted to the decrease in patent litigation after the passage of the American Invents Act in 2011. They have done this by instead focusing on USPTO proceedings developed by the government. For firms that specialize in patent prosecution, their method has been to cut rates by offering legal process outsourcing and alternative fee arrangements.

Fish & Richardson PC is the largest intellectual property boutique on the Law360 400. Finnegan Henderson Farabow Garrett & Dunner LLP come in second, and Knobbe Marten Olson & Bear LLP at third. In 2016, Fish & Richardson increased its number of attorneys by more than six percent.

Kenyon & Kenyon was no longer on the list after it merged with Andrews Kurth Kenyon LLP back in August.

While several intellectual property firms have gone out of business, others continue to expand.


The 2011 American Invents Act developed new types of post-grant proceedings, offering a low-cost method for accused infringers and third parties to contest the validity of the patent at the USTPO’s Patent Trial and Appeal Board. These reviews have increased up to more than 1,700 petitions a year. This has also caused a decrease in district court patent litigation because the cases are being put on hold for IPRs. Consequently, intellectual property firms have lost their ability to get district court work.

However, creative intellectual property boutiques have offered for IPR actions, placing themselves as go-to Patent Trial and Appeal Board attorneys. Ray, the Stern Kessler lawyer, stated that the enactment of the AIA offered an opportunity for lawyers who had some prior USPTO experience to become experts in the new proceedings.

Dealing with Price Demands

Clients are increasingly seeking to cut down on their intellectual property budget after the economic downturn in 2008. According to Ray, recent case law and legislation have also added to this by decreasing the value of the patent. Accused infringers are not likely to pay for a license or settle because now it is cheaper and easier to invalidate patents through an IPR or other post-grant proceeding at the USPTO. Patent holders view this as being more difficult to realize a profit when litigation is not likely to result in settlement or licensing fees. As a result, favorable prices are crucial for firms because companies are doubting the value of a patent portfolio and hoping to get that portfolio for a lower price. Alternative fee structures in addition to legal process outsourcing assists in increasing efficiency and decreasing costs.

Discovering Different Venues

Intellectual property firms are looking for new industries and venues in which they can develop.

The Supreme Court’s ruling in TC Heartland v. Kraft Foods Brand means that district court patent suits will change geographically very soon. Additionally, the U.S. International Trade Commission has become a more attractive venue for patent owners seeking to stop imports of infringing items. ITC cases are different from district court litigation in that they are not stayed for PTAB proceedings. This essentially means that companies are able to receive an order banning imports faster.

For more information, see Law360.

Courts Restrict Where Patent Suits Can Be Filed

May 29th, 2017 Alexander No comments

Last week, the Supreme Court placed even more limitations on where patent owners can file infringement lawsuits. This decision will drastically change almost 30 years of settled practice, probably pushing numerous lawsuits out of the Eastern District of Texas.

The Supreme Court reversed a ruling that basically permitted patent holders to file suit anywhere a defendant makes sales. Critics stated that this encouraged forum shopping and an aggregation of suits in a few courts.

Justice Clarence Thomas stated in an opinion “We therefore hold that a domestic corporation ‘resides’ only in its state of incorporation for purposes of the patent venue state.”

In Fourco Glass Co. v. Transmirra Products Corp., the Supreme Court ruled that “resides” meant the place of incorporation. However, in 1990, the Federal Circuit implemented a broader rule, permitting patent lawsuits to be filed anywhere that a defendant does business.

After Kraft Foods Group Brands LLC sued TC Heartland for infringement, TC Heartland challenged the statute, encouraging the Supreme Court to overturn the Federal Circuit’s broad interpretation of the law.

A majority of people believed that if the Supreme Court ruled for TC Heartland, a bulk of patent suits would move to Delaware, where a lot of businesses are incorporated, and the Northern District of California, where there are many technology companies.

For more information, see Law360.

Unwired Planet LLC v. Apple Inc.

April 9th, 2017 Alexander No comments

This case, involving two huge tech companies, takes place in the U.S. District Court for the Northern District of California. Unwired Planet is seeking $33 million in damages from Apple for infringement of its wireless, location and voice recognition patents. Unwired Planet asserts that the $33 million is equitable in light of the fact that Apple is seeking $400 from Samsung in a similar proceeding. On the other hand, Apple contends that the damages it was seeking in the Samsung case is irrelevant to the case at bar. Judge Chhabria granted Apple’s motion in limine, agreeing with Apple.

Judge Chhabria ordered Unwired Planet to reveal documents in its infringement case with Samsung and Huawei Technologies Co. Ltd. Upon discovering this, Tracey B. Davies of Gibson Dunn, attorney for Apple, asserted that Unwired Planet’s witnesses were presenting figures “directly contrary” to information they offered during the case. In addition, Davies contended that Apple was not able to depose those involved in the case, thereby substantially prejudicing Apple. Although Judge Chhabria has not seen Apple’s sanction bid, his “preliminary reaction” is to reject it.

Furthermore, Judge Chhabria mentioned that he will not excuse jurors during jury selection just because they are Apple consumers.

For more information, see Law360.

5 Secrets Of Successful Patent Litigators

December 15th, 2015 Alexander No comments

Here, the pros share five secrets about what it really takes to become patent litigators performing at the top of their game.

Have a Hunger for Learning

Whether the case is about devices that help a smartphone run or active ingredients that make a drug effective, patent litigators have to want to learn as much as they can about the scientific subject matter of the case.

“In many situations, you won’t be able to anticipate until very late in a case what facts will become important, and your ability and willingness to become deeply immersed in the technology are critically important to running a flexible and agile case,” according to Jason Sheasby, a partner at Irell & Manella LLP.

“The judge and jury can sense when someone has a great facility of the technology, and it can give you confidence and credibility,” he said. “Becoming an expert in the technology also allows you to see arguments that you might miss if you have an understanding at a more facile level and adds depth to your litigation strategy.”

Put Yourself in Others’ Shoes

Attorneys are only going to get so far in their case if they only see the dispute from their client’s point of view. A key feature of any successful patent litigator is to have empathy for those around them.

“It’s the ability to figure out what the jury wants to know; it’s the ability to figure out what motivates the opponent, whether that’s the attorney or otherwise; and it’s the ability to write briefs for the judge, not for yourself,” said John Dragseth, a principal at Fish & Richardson PC. “It must be a secret because very few attorneys do it well.”

Lawyers sometimes struggle with stepping outside their own perspective of the case to ask themselves what the judge or jurors care about and how to get them to root for their client. One way to try to resonate with jurors is by drawing an emotional story out of a patent case. While a patent dispute may look like a fight over money between two corporations at first glance, a deeper review may reveal that a more relatable story can be told.

Think Big and Small

If the goal is to win case after case, attorneys must be flexible with their argument style. But being able to shift their arguments from the big-picture level down to the tiniest-of-details level can only be done if lawyers know the facts of their case down cold.

“A lot of good lawyers in our field try to win just at the 30,000-foot level, and it tends to be a winning strategy,” said Gerald Flattmann Jr., a Paul Hastings LLP partner. “But sometimes you need to develop a more complex case of noninfringement or invalidity. And when you need to move to specifics, you need to know the facts.”

“Attorneys need to understand how to adjust so that if a judge initially rules against them at a general stage, they can take a deeper dive and argue at a more specific level,” he said. “This may not be a secret, but it’s something lawyers don’t do.”

Don’t Be Afraid to Go for the Kill Early

Attorneys may think they should hold back from laying into the opposing side’s witnesses until cross-examination, but successful litigators don’t wait for trial. Instead, they try to wring the most of witnesses at the deposition stage.

“I believe cases are won or lost at the expert deposition phase,” Flattmann said. “If you secure enough admissions at deposition, you’ve essentially wired the witness for trial. The cross-exam against the witness’s positions will be concise and effective, and your trial will be a breeze.

However, many attorneys waste precious time at depositions by asking about an expert’s background, rather than drawing out answers on the key issues at stake.

“Attorneys ask about what schools the expert went to and what he did his dissertation on,” Flattmann said. “Who cares? None of that matters. Of course you should know that background, but that’s not where the gold is. Attorneys should be asking the ultimate questions early.”


Even when patent lawyers know the facts of a case inside out, they can’t always avoid surprises. Litigators who are able to pivot as new issues come to light are the ones who win cases.

“You never know what witnesses will say, and you may find out during discovery or depositions that the theory you were building your case on turns out not to be true,” Freeman said. “Attorneys have to adjust quickly as new information becomes available. If they get stuck on one theory or are unable to adjust, they could miss out on getting valuable testimony.”

For more information, see Law360.

Patent Suit Filings Continue On Record Pace

July 26th, 2015 Alexander No comments

More than 3,100 new patent cases have been filed in federal court so far this year, a record-breaking number that could put patent filings in 2015 at an all-time high.

Legal analytics firm Lex Machina reported the first six months of 2015 were the busiest first-half-year period ever for patent litigation.  If filings continue at this rate, they would surpass the 6,000 mark by years end and top the 2013 record total.

Owen Byrd, Lex Machina’s general counsel, asserts that while the Patent Trial and Appeal Board has grown in importance since it opened for business in 2012, the numbers show that the district court remains the go-to venue in patent disputes.

“Federal courts continue to be critical forums for resolving patent disputes,” he said.

The potentially record-breaking numbers are a reversal from 2014, when filings dropped 40 percent in September compared to the year before. Experts at the time speculated that more plaintiffs might be opting not to file suit in the wake of the U.S. Supreme Court’s ruling in Alice, which held that abstract ideas implemented using a computer are not eligible for a patent.

Michael Sacksteder of Fenwick & West LLP also pointed to the Octane Fitness ruling as one that may have concerned patent owners, since that case made it easier for lower courts to require the losing party in patent cases to pay their opponents’ fees.

“I think we’re still seeing a lot of patents found invalid under Alice and seeing more fee awards than before,” he said. “But these entities that own these patents own these assets, and if they’re not doing anything with them, they’re definitely not getting anything out of them.”

Further, only 15 companies accounted for just more than 40 percent of all the cases filed in June and led by patent holding company Oberalis LLC, which filed 50 lawsuits, while taking on big name retailers like Toys ‘R’ Us, Macy’s Inc. and Petco Animal Supplies Inc.

The overall industry boom comes as lawmakers continue to debate legislation that proponents say will curb abusive patent litigation and reign in what some have called an abuse of the patent system.

For more information, see Law360.

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