Federal Circuit Splits on Venue Transfer Issues

By Dennis Crouch

In re Apple Inc. (Fed. Cir. 2014); In re Barnes & Noble (Fed. Cir. 2014)

In a pair of decisions, the Federal Circuit has denied two different petitions for writ of mandamus that sought appellate oversight in the transfer motions. Both cases involved identical split panels with Judges Reyna and Prost in the majority (denying mandamus) and Judge Newman in dissent. Over the past several years, a number of § 1404 transfer petitions have been filed at the Federal Circuit following the court's 2008 TS Tech decision. See, In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).

In both cases here, the majority found that the movant had failed to "meet its exacting burden to demonstrate that the district court was clearly and indisputably incorrect in concluding that the case should not have been transferred" by the District Court judge.

Judge Newman's dissents are interesting she writes in Apple:

The plaintiff, Core Wireless Licensing, S.A.R.L., is a Luxembourg company having one employee. Core Wireless maintains a wholly-owned subsidiary, Core Wireless USA, a Texas corporation with 6 employees who live in or near Plano, Texas. Core Wireless USA's employees manage Core Wireless's patent portfolio, including any licensing agreements deriving therefrom. Neither Core Wireless nor Core Wireless USA makes, uses, or sells the patented subject matter in Texas or elsewhere.

The accused products are versions of Apple Incorporated's iPhone and cellular iPad products. Apple has been headquartered in Cupertino, California since 1976. Apple's management and primary research and development facilities are also located in Cupertino where Apple employs over 13,000 people. The record also states that the research, design, and development of the accused products took place in Cupertino and that virtually all Apple business documents and records relating to the research, design, development, marketing strategy, and product revenue for the accused products are located in or near Cupertino. Additionally, Apple has stated that its foreseeable witnesses with knowledge of the research, design, and development of the accused products reside or work in or near Cupertino.


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Senior Patent Engineer (Wireless) – Small Corporation – San Francisco, Calif.

rpxRPX Corporation is the leading provider of patent risk management solutions. Since our founding in 2008, RPX has introduced efficiency to the patent market by providing a rational alternative to litigation. We acquire patents in the open market and out of litigation that would otherwise become a costly problem for our clients. The company’s groundbreaking approach combines principal capital, deep patent expertise, and client contributions to generate enhanced patent buying power. We also execute large-scale structured transactions on behalf of our clients, provide litigation insurance, and deliver in-depth market intelligence and strategic advisory services to our growing client network.

The Patent Analysis department synthesizes complex technologies and legal patent issues into actionable intelligence for RPX executives and clients. Patent Analysis research and analysis support initiatives in defensive portfolio buying, prior art validity actions, and advisory services. The positions in Patent Analysis require a deep and broad knowledge of specific technology sectors.

As a Senior Patent Engineer you will analyze patent claims and related materials in view of legal, technological, and business environments to understand the technical merit and patent quality of individual patent portfolios. Your main responsibility is to distill a body of analysis and research into a concise, clear, and actionable assessment to both technical and nontechnical audiences. You will report directly to the Manager, Patent Analysis.

Role
Typically you will:

  • Assess numerous engineering and legal factors to extract patent value proposition
  • Draw on detailed knowledge of relevant technologies, companies, and industries
  • Explain complex technical issues to nontechnical audiences
  • Isolate critical technical components of patents, products, and services
  • Learn and apply legal concepts related to patents including prosecution and litigation
  • Research timeliness of patents in support of validity challenges and prior art reports
  • Support analysis conclusions with research driven logic and confidence
  • Collaborate across the organization in-person and with virtual, global teams
  • Establish and cultivate relationships internally and externally

Education and Experience

  • Bachelor’s degree in Electrical Engineering or Computer Science
  • Experience with client engagements in explaining highly technical subject matter
  • Experience with reverse engineering and reviewing evidence of use
  • Previous experience in a wireless engineering role with a focus on designing, implementing, and testing wireless products or services
  • Patent Attorney or Agent viewed favorably
  • Master’s degree or Doctor of Philosophy in Electrical Engineering or Computer Science viewed favorably
  • Management and supervisory experience  viewed favorably
  • Involvement in patent issues including prosecution, litigation, and valuation viewed favorably

Technical Skills

  • Broad expertise in various aspects of wireless technologies from access and attachment to delivery of services over a wireless network
  • Familiarity with wireless-centric services such as IoT, infotainment/telematics, mobile payments, media streaming and location-based services
  • Strong familiarity with communication protocols and standards (e.g., 3GPP LTE and LTE-A, 802.11, Bluetooth, NFC)
  • Strong familiarity with products and services that utilize or provide wireless technologies, such as baseband chipsets, smartphones, access points, base stations and core network platforms
  • Proficiency with Microsoft Office suite

Competencies to be Successful
At RPX and in this role, you should be:

  • Comfortable with independently managing deadlines and conflicting priorities to deliver quality results
  • Able to demonstrate a consistent record of excellence, ownership, and accountability
  • Service-minded and passionate about results with an ability to develop positive relationships
  • Adaptable to the many changing requirements and needs of a dynamic company
  • A person with dedication and worth ethic that thrives in a collaborative culture with excellent social, networking, and influencing skills
  • Motivated and self-directed with a willingness to take on additional projects
  • Able to demonstrate good judgement
  • Highly focused, organized, and pay attention to details
  • A person that embodies the RPX values through communication and actions

RPX is an equal opportunity employer.

Contact
To apply, please visit this website: http://www.rpxcorp.com/about-rpx/rpx-careers/?p=job%2FomvX4fwC.

Additional Info
Employer Type: Small Corporation
Job Location: San Francisco, California

Patent Agent or Technical Writer – Law Firm – San Diego, California

Duane Morris LLP has an opening for a electrical engineering (EE) patent agent or technical writer with a background or experience in wireless communication technologies and/or semiconductor processing or semiconductor circuits, to join its growing Intellectual Property practice group, in San Diego.

Patent agent candidates should have at least 1 year of exp. preparing and prosecuting patent applications in the area of “wireless communications” and be familiar with 4G/5G standards. Technical writer candidates should have an advanced degree in EE and significant exp. preparing technical documents describing wireless communication systems and/or standards. Industry work experience in the area of wireless communications and fluency in speaking, reading and writing Mandarin is a plus.

Ideal candidate will have strong academic credentials, fluency in Mandarin, significant experience preparing patent applications or technical documents concerning wireless communications, ability to effectively communicate with clients and inventors, and thrive in a creative, entrepreneurial and collegial environment. Candidate will also need to produce at least 3 writing samples of published applications or technical documents directed to wireless communications. Applicants who do not meet the above criteria should not apply. EOE/AA/M/F/D/V.

Contact
Apply online via the following link: https://www.duanemorris.com/ site/careers.html#tab_ CurrentOpportunities.

Additional Info
Employer Type: Law Firm
Job Location: San Diego, California

Patent Agent / Technical Writer – Large Law Firm – San Diego, Calif.

Duane Morris LLP has an opening for a patent agent or technical writer with a EE degree and a background or experience in wireless communication technologies to join its growing Intellectual Property practice group, preferably in its San Diego office. Patent agent candidates should have at least 1 year of experience preparing and prosecuting patent applications in the area of “wireless communications” and be familiar with 4G and 5G standards. Technical writer candidates should have an advanced degree in EE and significant experience preparing technical documents describing wireless communication systems and/or standards.

For all candidates, industry work experience in the area of wireless communications and fluency in speaking, reading and writing Mandarin is a plus. Ideal candidate will have strong academic credentials, fluency in Mandarin, significant experience preparing patent applications or technical documents concerning wireless communications, ability to effectively communicate with clients and inventors, and thrive in a creative, entrepreneurial and collegial environment.

Contact
To apply, please visit this website: https://www.duanemorris.com/site/careers.html#tab_CurrentOpportunities. Candidate will also need to produce at least 3 writing samples of published applications or technical documents directed to wireless communications. Applicants who do not meet the above criteria should not apply. EOE/AA/M/F/D/V.

Additional Info
Employer Type: Law Firm
Job Location: San Diego, California

Patent Counsel – Small Corporation – San Diego, Calif.

RAYSPAN

RAYSPAN®, the world's leading innovator of metamaterial air interface solutions for wireless communications, is seeking a patent attorney. As patent counsel, you will lead the RAYSPAN® IP department by identifying,  securing and enforcing intellectual property protection (e.g., patents, trademarks, trade secrets) for inventions and discoveries made by our engineers and technical leaders.

Responsibilities:
• Manage and provide growth to in-house patent agents and paralegals team while overseeing in-house IP docketing system.
• Develop an IP roadmap and strategies per Rayspan’s business goals and Participate in IP-portfolio due-diligence.
• Review and prosecute provisional, non-provisional, and Trademark applications drafted by Rayspan’s patent agents. This includes drafting strong claims and responding to office actions. You will work with outside counsel to file and prosecute U.S. and foreign patent applications.
• Provide legal counseling regarding intellectual property issues, including patentability and freedom to operate.
•  Protect Rayspan’s IP assets by acting as company liaison with outside law firms on behalf of Rayspan, protecting Rayspan in prosecution of US, European or other foreign applications,  interferences, oppositions and litigations
• Counsel Rayspan's business and research managers in intellectual property law as part of the decision making process, and conduct IP mining by identifying research that may be subject to protection through filing of patent applications.
• Manage in-licensing of technology from universities and companies and coordinate with licensor's attorneys to develop patent strategies for licensed technology which meets Rayspan's business goals.
• Support on patent-related sections in Rayspan licensing agreements to customers.
• Review Rayspan’s technical publications, presentations, and public release of IP material prior to submission for publication.

Requirements:
• J.D. plus Bachelor's Degree in Electrical Engineering or Physics, an advanced degree or experience in Radio Frequency wireless communications is desirable;
• Minimum of 7+ years of experience as an IP attorney with a law firm and/or corporation.
• Admitted to a State bar and to U.S. Patent and Trademark Office;
• Patent experience in RF wireless industry or semiconductor is a plus;
• Ability to understand business issues, particularly in the wireless cell phone industry.
• Experience with preparation and prosecution of patents (U.S. and foreign); preparation of infringement, invalidity, freedom-to-operate opinions and client counseling;
• Experience in IP licensing agreements, contracts, and negotiation is highly desirable.
• Excellent written and verbal communication skills, ability to work with a diverse group of people at different levels in Rayspan.
• Ability to undertake some travel as required to support domestic and international customers with IP-related matter.
• Exposure to patent litigation is a plus.

Contact:
RAYSPAN® is located in sunny San Diego, California, and offers competitive compensation & benefits programs. Please submit resumes to career@rayspan.com.

Additional Info:
Employer Type: Small Corporation
Job Location: San Diego, California

Metamaterials provide breakthrough improvements in antenna and RF front-end component miniaturization, performance, cost reduction and ease of manufacture. Rayspan's solutions support a full range of fixed and mobile wireless WAN and LAN applications including all 2/3/4G cellular handsets, WiFi, Bluetooth and GPS.

From Knobs to Pixels: UI Patent Eligibility on Trial

by Dennis Crouch

For over 150 years, "user interfaces" have been a staple of patent protection, evolving from the physical realm of tool handles and knobs to today's digital screens. Although tangible interface elements continue be patented as components of larger systems, the market shift towards on-screen interfaces has been paralleled with the anti-eligibility shift in Mayo and Alice. The Federal Circuit recently waded into these murky waters in Broadband iTV, Inc. v. Amazon.com, Inc., No. 23-1107 (Fed. Cir. Sept. 3, 2024), examining the patent eligibility of electronic programming guides and content recommendation systems. Affirming a decision by Judge Albright, the appellate panel held that the claimed inventions lacked eligibility under 35 U.S.C. § 101, distinguishing some prior GUI cases that sided with the patentee.


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Patent Attorney or Patent Agent – Law Firm – Sunnyvale, Calif.

Downey BrandDowney Brand's Intellectual Property practice seeks to expand with the addition of a Patent Agent or Patent Attorney to be based in its Silicon Valley office. Primary responsibilities include preparing and prosecuting intellectual property (IP) patent applications for cutting edge technology companies. Other responsibilities may include IP training, third-party IP investigations, and due diligence. Candidates should have a minimum of 3 years of law firm experience as a Patent Attorney or Patent Agent, and be registered to practice before the U.S. Patent & Trademark Office (USPTO).

An undergraduate and/or graduate degree in electrical engineering and/or computer science and/or mechanical engineering is preferred. Attorney candidates must also be current, active members of the California State Bar. The person hired for this position would ideally have technical fluency in cellular wireless (e.g., 3G, 4G, 5G, GSM, UMTS, LTE, LTE-A), wireless local area networks (e.g., Wi-Fi, 802.11xx), wireless personal area networks (e.g., Bluetooth), and/or near-field communications technologies. Preference will be given to candidates who have prepared and prosecuted at least 40 original patent applications, including a substantial number in the area of electrical and software-based technologies, particularly signaling processing and standardized protocols for wireless communication technologies.

Salaries are based on years of experience, and bonus consideration is based on productivity and performance. A distinguished academic record and exceptional research, writing, organizational and verbal communication skills are essential.

Please submit cover letter, resume with references, graduate and/or J.D. degree transcripts, and a brief, recent writing sample (the writing sample may be any prosecution applicant has undertaken at the PTO; a patent number or published application number that applicant has actually worked on will suffice) electronically to Maureen Cooper, Recruiting Director, via the firm’s web application.

Downey Brand LLP is an Equal Opportunity/Affirmative Action employer. No telephone calls or e-mail applications, please. Principals only.

Contact
To apply, please visit this link: https://lawcruit.micronapps.com/sup/v2/lc_supp_app_frm.aspx?lawfirm=169&id=54.

Additional Info
Employer Type: Law Firm
Job Location: Sunnyvale, California