by Dennis Crouch

The U.S. Court of Appeals for the Federal Circuit recently affirmed a finding by  Western District of Texas Judge Alan Albright that certain claims in two patents owned by WSOU Investments LLC were invalid as indefinite under 35 U.S.C. §112.  WSOU Invs., LLC v. Google LLC, Nos. 22-1066, -1067 (Fed. Cir. Sept. 25, 2023).  Although the decision is designated nonprecedential, it includes a number of interesting lessons on the requirements for definiteness and disclosure of corresponding structure under 35 U.S.C. §112.

The Technology at Issue

The first patent at issue was U.S. Patent No. 7,304,563 (“the ‘563 patent”), entitled “Alarm clock.” This patent claimed an alarm clock feature for mobile phones where the alarm involved initiating a connection to another device over a network to cause that device to signal the alarm.

Claim 16 is is recited in means-plus-function form:

issuing means for issuing an alert when the current time matches the alert time by initiating a connection to another communication terminal over a network so as to cause that other terminal to locally signal the incidence of the connection incoming thereto

‘563 Patent, claim 16. Claim 16 is clearly written in means-plus-function form, but the focus of the appeal was on claim 1, which was substantially similar.  The key difference though is that the claim 1 limitation was directed to “an alerting unit” rather than an “issuing means:”

an alerting unit configured to issue an alert when the current time matches the alert time, the alerting unit being configured to issue the alert by initiating a connection to another communication terminal over a network so as to cause that other terminal to locally signal the incidence of the connection incoming thereto

‘563 Patent, claim 1.  Judge Albright found both claims to be in means-plus-function form and the Federal Circuit affirmed on appeal.

In patent law, “means-plus-function” (MPF) claiming is a way to define an element of a patent claim by the function it performs rather than by its specific structure. This type of claiming is governed by 35 U.S.C. § 112(f), which allows patentees to express a claim limitation as “a means or step for performing a specified function.” When a claim is interpreted under § 112(f), the claim limited to the specific structure disclosed in the specification and equivalents thereof.   This limitation to actually disclosed structure (and equivalents) severely limits the scope of MPF claims that often seem much broader when read in the abstract.  But, the beauty of MPF analysis is that it is designed to preserve the validity of claims that might be unduly indefinite, not enabled, or even extent to ineligible subject matter.   Patentees often fall into the common trap of using of MPF limitations without providing adequate structure within the specification.  If no structure is disclosed in the specification for a means-plus-function (MPF) claim, the claim is deemed indefinite and therefore invalid. In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994).

The Federal Circuit has established a two-step framework for determining whether a claim limitation is subject to MPF construction under 35 U.S.C. 112(f). First, the court must determine if the limitation uses the term “means.” If so, a rebuttable presumption is triggered that 112(f) applies. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). Prior to Williamson, there was a strong presumption associated with use of the word “means.”  In particular, courts generally assumed that a claim term that did not use the word “means” was not subject to § 112(f) interpretation. Williamson altered this landscape by holding that the presumption can be quickly overcome, even if the word “means” is not present, if the claim term fails to recite sufficiently definite structure or else recites a function without reciting sufficient structure for performing that function.

In Williamson, the court noted that patentees had begun using various “nonce words” that were effectively non-limiting placeholders designed to avoid MPF interpretation.  Here, for instance, the claimed “alerting unit” is roughly equivalent to a means-for-issuing-an-alert.  The presumption against MPF can quickly be overcome in situations where the patentee uses a nonce word to designate the element if the limitation generally fails to recite sufficiently definite structure.

Looking particularly at claim the court first noted the rebuttable presumption against means-plus-function treatment since Claim 1 is directed to a “unit” and does not use the term “means.”  In rebutting the presumption, the court agreed with Judge Albright that in the context of the claims and specification, the term “unit” was defined only by the function it performs, rather than connoting any specific structure.  In its analysis, the court held that the language surrounding “alerting unit” in the claim consisted of purely functional language that provided no structural context. Terms like “configured to issue an alert” and “initiating a connection” were purely functional.  The court also looked to the specification to see how the “alerting unit”  phrase was used — finding that it was also described in the same purely functional terms as the claim language.  In the end, the appellate panel agreed with the district court that “unit” and “means” were used interchangeably in the patent, indicating “unit” was a generic placeholder rather than structural term.

The patentee WSOU had offered expert testimony on point, but the appellate court rejected the extrinsic evidence for its attempt to be a “gap filler.”

To the extent that WSOU argues that the ‘interpretation of what is disclosed in the specification must be made in the light of knowledge of one skilled in the art,’ it invites us to improperly use the knowledge of a skilled artisan as a gap-filler, rather than a lens for interpretation.  WSOU argues that a skilled artisan would ‘understand the structure involved with a mobile phone using GSM ….

However, those arguments are irrelevant as The indefiniteness inquiry is concerned with whether the bounds of the invention are sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to practice the invention.

WSOU (internal citations and quotations removed).  This quote from the appellate panel rejects WSOU’s attempt to use expert testimony regarding PHOSITA to overcome the lack of structural disclosure in the specification. The court emphasizes that gaps in the specification cannot be filled by skilled artisan knowledge during the 112(f) analysis.

Having determined that claim 1’s “unit” was in MPF form, the court then moved to the next step — looking for the corresponding structure within the specification to perform the claimed function.  On appeal, the appellate panel again agreed with Judge Albright that no such structure had been disclosed.  The court examined the disclosed processor, communication engine, antenna, and communication protocols , but found no clear link between these components and the claimed function of “initiating a connection to another communication terminal over a network.” Rather, the specification disclosed these structures in a general sense without specifically tying them to the network connection function. Merely mentioning general components is insufficient to provide corresponding structure for a means-plus-function limitation. Because the patentee failed to disclose adequate structure for the “alerting unit” limitation under 112(f), Claim 1 was held invalid as indefinite.

For the ‘563 patent, the court determined that the “issuing means” limitation in Claim 16 was subject to 35 U.S.C. §112(f), which governs interpretation of means-plus-function claim limitations. The court identified two functions for this means-plus-function limitation: (1) initiating a network connection to another device, and (2) causing signaling means to locally signal the user. The court held that the specification failed to disclose sufficient structure corresponding to either of these functions, and therefore the claim was indefinite under §112(f). The court reached the same conclusion regarding the similar “alerting unit” limitation in Claim 1.

I quibble with the Federal Circuit’s doctrine on MPF indefiniteness. In particular, the court’s precedent creates an if-then approach: if no sufficient structure then automatically indefinite.  I would suggest an additional step asking whether the claim provides reasonably certain scope, recognizing that 112(f) was particularly designed to permit flexibility using narrowing of claims rather than invalidation.

the plurality of parts [including] a first part closest to a center, a third part farthest from the center, and a second part in between the first part and the second part.

‘681 patent, claim 1 (simplified).  You can see that the claim requires a “second part” located between the first and second part.  Nonsense.  It is pretty clear to me that the patentee intended (but did not claim) that the second part would be between the first and third parts.   Unfortunately for the patentee, this exact typo was also found within the specification, and the patent did not include a clear drawing showing the correct aspect.

The court emphasized that it cannot redraft claims to contradict their plain language, even to make them workable.

We have explained repeatedly and consistently, ‘courts may not redraft claims, whether to make them operable or to sustain their validity.’ Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004). Even ‘a nonsensical result does not require the court to redraft the claims of the [patent at issue]. Rather, where as here, [when] claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated.’ Id.

Slip OP.

The patents here were both originally owned by Nokia.  They were later transferred to WSOU, a patent assertion entity associated with Craig Etchegoyen, a former CEO of another patent assertion entity, Uniloc.

by Dennis Crouch

Baxalta Inc. v. Genentech, Inc., No. 22-1461, — F.4th — (Fed. Cir. Sept. 20, 2023).

The Federal Circuit recently affirmed a finding of invalidity for lack of enablement in Baxalta v. Genentech, holding that functional antibody claims were insufficiently enabled under 35 U.S.C. §112. Relying heavily on the Supreme Court’s Amgen v. Sanofi decision, the appellate panel found Baxalta’s disclosure to be analogous to Amgen’s “roadmap for further research” rather than a complete teaching of the invention. This result again calls into question the viability of broad functional claims post-Amgen and highlights the importance of structurally defining inventions, especially in unpredictable arts like biotechnology.

As mentioned, the case has close parallels and to the Supreme Court’s recent decision in Amgen Inc. v. Sanofi, 598 U.S. 594 (2023).  Amgen involved a functional-claimed antibody designed to inhibit PCSK9 activity.  The Supreme Court found that the broad claims encompassed a large number of antibody configurations while only describing a limited number of those, along with a trial-and-error roadmap for finding the additional embodiments.  Although some experimentation is permissible, a patentee cannot satisfy the enablement requirement by assigning a research project.  Ultimately, the Court concluded that Amgen had failed to enable the “full scope” of the claimed invention and that the claims were therefore properly held invalid as a matter of law.

As in Amgen, Baxalta’s patent also includes a functionally claimed isolated antibody:

1. An isolated antibody or antibody fragment thereof that binds Factor IX or Factor IXa and increases the procoagulant activity of Factor IXa.

‘590 Patent, Claim 1.

The invention involves a treatment for Hemophilia A to promote blood coagulation.  As you’ll note by looking at Claim 1, it does not claim any particular amino acid sequence or antibody structure, but rather claims all antibodies capable of binding Factor IX or IXa in a way that increases  its procoagulant activity.  The inventors went through a process of injecting Factor IX into mice, and collecting resulting antibody producing white blood cells (B-cells). Those B-cells were then fused with myloma (cancer) cells to promote rapid growth even in vitro. As those fused B cells continued their work, the resulting antibodies were screened to determine which ones increased the procoagulant activity.  Although this process is tedious, it was a familiar and known process at the time of the invention. The result was several hundred antibodies generally identified through the screening, although only 11 were sequenced and disclosed in the patent application.

Genentech’s accused product (Emicizumab) was not one of the 11 disclosed.  The court also noted that, unlike the disclosed antibodies, Emicizumab is a humanized bispecific antibody and would not have been identified through the patentee’s research approach. One note here, unlike in Amgen, the Baxalta patent is not limited to “monoclonal” antibodies even though the disclosed research protocol would only result that type of antibody.

The Patent Act requires that the patentee describe how to make and use the invention:

the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.

35 U.S.C. § 112(a). Whether or not a particular invention has been enabled is seen as a question of law based upon underlying questions of fact.  Although courts would typically call this a “mixed question” of law and fact, the conceptual separation allows courts more leeway in preemptively deciding the legal question without having to submit the inquiry to the finder of fact (typically a jury).

In this case, Federal Circuit Judge Timothy Dyk served as the district court judge — sitting by designation in D.Del.  In a 2022 decision, Judge Dyk granted summary judgment of invalidity for lack of enablement. On appeal, the Federal Circuit affirmed — finding the facts of the case “materially indistinguishable from those in Amgen.”

There are millions of potential candidate antibodies, but the written description discloses the amino acid sequences for only eleven antibodies with the two claimed functions. . . Just like the roadmap rejected by the Supreme
Court in Amgen, the ’590 patent’s roadmap simply directs skilled artisans to engage in the same iterative, trial-and-error process the inventors followed to discover the eleven antibodies they elected to disclose.

Slip Op. Enablement of a broad genus can also be accomplished by disclosing common qualities of the genus. These are typically structural qualities, but the court here notes that the might include “other” features that help delineate the class.  An example might involve the mechanism of binding, for instance. The court found none of those in the disclosure.

The only guidance the patent provides is “to create a wide range of candidate antibodies and then screen each to see which happen to bind” to Factor IX/IXa and increase procoagulant activity. Amgen makes clear that such an instruction, without more, is not enough to enable the broad functional genus claims at issue here.

Id. (Quoting Amgen).  One question following Amgen is whether the case disturbed the Wands Factors associated with identifying “undue experimentation.” Here, the court wrote that there is “no meaningful difference between Wands’ ‘undue experimentation’ and Amgen’s ‘[un]reasonable experimentation’ standards.”  One difficulty with that result though is that the Wands Factors are generally questions of fact that, if in dispute, preclude summary judgment.  Here though, the court concluded that the case was so analogous to Amgen that summary judgment was appropriate — the effective implied conclusion is that there were not factual allegations presented by the patentee material enough to shift the outcome.

Baxalta reinforces that claimed inventions should be defined structurally insofar as possible, rather than solely by function. While claim breadth is undoubtedly desirable, applicants must now enable the full scope or risk invalidation post-Amgen. Even fields accustomed to broad functional claiming may require narrowing to structurally-defined elements, especially where some aspect of the design remains unpredictable.  A functional limit is potentially problematic any time a claim element has “millions” of possible embodiment designs.  On major caveat here of course is that these two cases are biotech focus and the USPTO in particular has largely resisted strongly expanding enablement doctrine outside of the chemical and biotech arts.  Another caveat of these pair of cases is that neither are combination claims. Rather, each simply claim a single component – the antibody.  I can imagine a situation where more leeway is given to functional components in a combination patent where substantial structure is provided by the combination, including other components in the combination.  Finally, also note that 112(f) is available for combination inventions to claim individual elements in means-plus-function form. That approach should typically save the claim validity at the cost of limited scope.

by Dennis Crouch

The Federal Circuit recently vacated a jury verdict of non-infringement in the long-running design patent dispute between outdoor apparel companies Columbia Sportswear and Seirus Innovative Accessories. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, — F.4th — (Fed. Cir. Sept. 15, 2023). The Federal Circuit held that “comparison prior art” used for infringement analysis must be tied to the same article of manufacture as that claimed.  The lower court thus erred by permitting the jury to consider additional references. The decision benefits design patent holders – making it easier to prove infringement and also places more weight on skillful decisions made during prosecution to define the article of manufacture.

Columbia owns U.S. Design Patent No. D657,093, which claims an ornamental design for a heat reflective material featuring contrasting wavy lines. Seirus sells gloves and other products incorporating its HeatWave material, which features similar wavy lines. Columbia sued Seirus for infringing the ‘D’093 patent in Oregon federal court.

The district court originally granted summary judgment of infringement in Columbia’s favor. On appeal, the Federal Circuit vacated and remanded, finding disputed issues of fact regarding the impact of Seirus’s logo and certain prior art references.  Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (“Columbia I”) (holding that logo placement might allow the defendant to avoid an infringement judgment).  I noted previously that this holding is in some tension with the court’s 1993 decision in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (1993). On remand, the case went to trial, and a jury came to the opposite conclusion — finding no infringement. Columbia again appealed to the Federal Circuit.

Jury verdicts are given strong deference on appeal and so are usually not directly challenged. Here, the appellant skirted the verdict itself by focusing on the jury instructions, with the patentee arguing that the district court erred in its instructions regarding “comparison prior art.”

In design patent law, the test for infringement is whether an ordinary observer would find the accused design substantially similar to the claimed design, such that they would be deceived into purchasing the accused design believing it to be the claimed design. See Gorham Co. v. White, 81 U.S. 511 (1871). When the claimed and accused designs are not plainly dissimilar, courts apply this “ordinary observer” test in light of the prior art. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc).  The rationale is that prior art designs provide context that can help highlight similarities and differences between the claimed and accused designs.

In its decision, the Federal Circuit held for the first time that a prior art reference can qualify as comparison prior art only if it discloses a design applied to the same article of manufacture identified in the design patent claim. This holding aligns with other design patent infringement precedent limiting the universe of anticipatory prior art and infringing designs to the particular article of manufacture claimed. See Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019); Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009).

We have held that, for a prior-art design to anticipate, it must be applied to the article of manufacture identified in the claim. We have also held that, for an accused design to infringe, it must be applied to the article of manufacture identified in the claim. We conclude that this requirement also applies to comparison prior art used in an infringement analysis.

Slip Op. (internal citations removed). The court explained its reasoning that its narrow approach aligns with the purpose of allowing comparison prior art: “that purpose is to help inform an ordinary observer’s comparison between the claimed and accused designs—designs that, necessarily, must be applied to the same article of manufacture.”  And, although the issue has not been expressly decided, prior cases also generally involved comparison prior art that had been applied to the same article of manufacture as that claimed.

Here, Columbia’s ‘D’093 patent claim was limited to ornamental designs for “heat reflective material.” Yet the district court instructed jurors that they must decide for themselves what constitutes comparison prior art, without explaining that it must involve designs applied to heat reflective material.  Three particular references with wavy designs were presented to the jury, including U.S. Patent Nos. 2,539,690  (inlaying plastic threads into plastic sheets); 1,515,792 (unwoven fabric for tires); 5,626,949 (shell fabric for outerwear).  Thought the claim is directed to “heat reflective material,” the court had admitted the references disclosing “wave patterns on fabric.” Columbia argued these references were improperly admitted as comparison prior art since they did not involve designs applied to heat reflective materials. But the Federal Circuit declined to directly rule on their admissibility, instead vacating and remanding for the district court to reconsider the issue under the new narrower requiring comparison prior art to be applied to the claimed article of manufacture.  The court suggested that the district court conduct a claim construction on the term heat reflective material before determining whether the references fit within the scope.

Seirus also argued that limiting the patent to heat reflective material would improperly import a functional limitation into the design patent claim. The Federal Circuit properly rejected that argument. While design patents cannot claim primarily functional designs, referring to an article of manufacture’s function to distinguish it from other articles is permissible and relevant.

by Dennis Crouch

The U.S. Court of Appeals for the Federal Circuit recently declined to issue a writ of mandamus directing the U.S. District Court for the Eastern District of Texas (Judge Gilstrap) to dismiss a patent infringement lawsuit against Charter Communications based upon improper venue. In re Charter Commc’ns, Inc., No. 2023-136 (Fed. Cir. Sept. 5, 2023). Although non-precedential, the decision highlights a key difference between motions to dismiss for improper venue under 28 U.S.C. § 1406 and motions to transfer venue for convenience under 28 U.S.C. § 1404. It also shows the high bar for obtaining the “extraordinary remedy” of mandamus relief from denial of an improper venue motion.

The usual rule for appeals is that parties must wait until final judgment.  Assuming that it loses on the merits, Charter will have another opportunity to appeal venue once the case is concluded.

Background: Entropic sued Charter for infringing several of its patents, including US10135682.  The patents cover various aspects of cable network management, focusing on Cable Modem Termination Systems (CMTS) that serve multiple cable modems. The CMTS determines various Signal-to-Noise Ratio (SNR) related metrics for these modems and assigns them to different service groups based on these metrics.

Although Charter derives substantial revenue from customers located in the Eastern District of Texas, it still moved to dismiss the case for improper venue under § 1400(b), arguing it lacked a regular and established place of business in that district.  This statute limits the locations where patent infringement lawsuits can be filed.

1400(b) Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.

Id.  The Supreme Court has interpreted this statute to limit actions against corporations to either (1) their state of incorporation or (2) a district where the defendant “has a regular and established place of business” and also infringes the patent by making, using or selling the invention.   Charter is a Delaware company and does not operate its own retail stores in the Eastern District.  Still, the district court denied the motion to dismiss, finding venue was proper because Charter ratified retail stores operated by its subsidiaries in the district and those subsidiaries were Charter’s agents.

Improper vs. Inconvenient Venue

There is an important distinction between improper venue under § 1400(b) and inconvenient venue under § 1404(a). Section 1400 applies when venue is “wrong” or “improper” in the chosen district. If venue is improper, the district court must dismiss the case or transfer it to a proper district.  And, if a case goes to conclusion in an improper venue, a losing defendant would have an opportunity to appeal and at least get a new trial in a proper venue.

In contrast, § 1404 allows transfer “[f]or the convenience of parties and witnesses” even when venue is proper. Courts have greater discretion in deciding § 1404 transfer motions based on case-specific factors like convenience and judicial economy.  And, by the end of a trial, it is almost never “convenient” to retry the case in another venue.  Thus, post-trial section 1404 appeals are basically automatic losers.

Thus, even though “wrong venue” sounds like a bigger deal than “inconvenient venue” the Federal Circuit has historically only granted immediate mandamus actions for the latter.  The difference here is that, absent mandamus, the inconvenient venue issue cannot practically be appealed.

Mandamus Standards

The party seeking a writ of mandamus must show (1) no other adequate means to attain relief; (2) a clear and indisputable right to issuance of the writ; and (3) the writ is appropriate under the circumstances. Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367 (2004).  In the past, the court has suggested that 1400(b) issues are unlikely to lead to mandamus relief because “post-judgment appeal is an adequate alternative means for attaining relief” if venue is found improper on appeal. In re Monolithic Power Sys., Inc., 50 F.4th 157 (Fed. Cir. 2022).

The Federal Circuit’s Decision

In a short opinion authored by Judge Cunningham, the Federal Circuit denied Charter’s petition for mandamus, finding no justification for immediate review of the district court’s order:

At most, CCI’s arguments present a record-specific dispute: whether CCI exerts control sufficient to impute its subsidiaries’ in-district operations to CCI under Fifth Circuit law. . . . CCI’s petition does not raise the type of broad, fundamental, and recurring legal question or other considerations that might warrant mandamus review.

In re Charter Commc’ns, Inc., (Fed. Cir. Sept. 5, 2023) (internal citations and quotation marks omitted). The court here emphasized that mandamus is an “extraordinary remedy” and Charter had not shown the district court’s decision was clearly wrong or raised a novel legal issue requiring prompt resolution. Rather, Charter seemed to “present[] a record-specific dispute” about imputing its subsidiaries’ activities to Charter for venue purposes. The court also explained that Charter could still challenge venue on direct appeal after final judgment, which provided an adequate alternative remedy.

Conclusions

The court has refused to take the bait and expand mandamus relief to improper venue challenges under § 1400(b). Defendants must generally wait to appeal after final judgment, even if venue may have been erroneous. Note though that mandamus may be still be justified for improper venue decisions implicating unsettled areas of law or where the party can show a major resulting injustice. But disagreements about case-specific facts and analysis are unlikely to clear the high mandamus bar.

The U.S. Patent and Trademark Office (USPTO) has called their 2.4 million square foot headquarters in Alexandria, Virginia home since 2005. But the agency does not actually own the cutting-edge facility located in the Carlyle neighborhood near the Potomac riverfront. Instead, the USPTO has leased the complex from New York-based real estate owner LCOR.

Several months ago, the USPTO announced it would be downsizing and relinquishing 800,000 square feet of space. The renewed 5-year lease covers 1.6 million square feet.  Still a big footprint, but one reflective of how the USPTO’s workplace and workforce have evolved over the past two decades.

When the agency first moved in, hoteling and work-from-home examiner programs were in place, but not the expectation. Fast forward to today and the USPTO has fully embraced telework along with opening satellite offices nationwide, reducing the need for everyone to be housed at HQ. Despite major examiner corps growth during this time, the footprint no longer needs to be so large.

However, the USPTO’s landlord LCOR now faces its own challenges filling the soon-to-be vacant space. The company continues to struggle finding replacement tenants, as office vacancy rates remain high nationwide.

Most recently, credit rating agency Moody’s downgraded LCOR’s credit outlook to “high risk of default” status. The downgrade reflects Moody’s view that LCOR may have trouble refinancing debt and have insufficient cash flow to cover interest payments unless new paying tenants are found.

I remember first visiting HQ way back then and thinking of the potential benefits of having a patent law office in an adjacent building.  Today, that imagined benefit seems much less so as it is likely that your examiner is sitting at home in another state.

by Dennis Crouch

Rafqa Star LLC v. Google LLC, No. 6:22-cv-01207-ADA, 2022 WL 3747666 (W.D. Tex. Aug. 17, 2022).

Google is one of the largest companies in the US with extensive ties not just to every state, but virtually every household in the entire country.  Still, the company regularly argues that it would be too unfair and inconvenient to litigate patent cases in states such as Texas. In a recent decision, Judge Alan Albright (W.D.Tex.) denied Google’s motion to transfer venue. In his 40-page order, Judge Albright provided an in-depth analysis of the private and public interest factors that, based upon prior precedent, govern transfer under 28 U.S.C. § 1404(a).  The relevant statute reads as follows:

For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.

Id.  Before analyzing this case, I want to step back and recognize that the current legal test for patent venue transfer has departed significantly from the statutory language declaring the goals of convenience and justice. The public and private factor analysis mandated by current precedent does not actually focus on real inconvenience to parties or witnesses. For instance, the location of documents and witnesses gets weight when almost everything is cloud based. And the 100-mile rule makes little sense in an age of national air travel and remote work.  This is especially true for patent cases that will have nationwide impact. (more…)

by Dennis Crouch

USC IP P’ship, L.P. v. Meta Platforms (Facebook), 22-1397 (Fed. Cir. August 30, 2023)

In a non-precedential opinion authored by Judge Pauline Newman, the Federal Circuit has affirmed USC IP Partnership’s asserted patent claims are all invalid.  Back in 2020, USC IP sued Facebook for infringing its U.S. Patent No. 8,645,300.  The arguably pro-patentee Judge Alan Albright served as the district court judge.  Like Judge Newman, he had also found the claims invalid as unduly directed to an abstract idea. USC IP P’ship, L.P. v. Facebook, Inc., 576 F. Supp. 3d 446 (W.D. Tex. 2021) (granting summary judgment of ineligibility).

(more…)

The Harris County Texas appellate court recently affirmed summary judgment favoring the Hunton Andrews Kurth law firm and its attorneys. Taylor v. Hunton Andrews Kurth, LLP, 14-22-00410-CV (Tex. App.–Hous. [14th Dist.] July 13, 2023).  Taylor and his companies WPEM and W2W had sued the firm for legal malpractice after first losing its infringement lawsuit and being stuck with the defendants attorney fees. The case offers a few key takeaways for entrepreneurs delving into the patent system. (more…)

by Dennis Crouch

The publicly traded Australian company IPH Limited continues expanding its global intellectual property services empire. IPH’s latest acquisition is the Canadian IP firm Ridout & Maybee for $65 million Canadian dollars. This comes just 10 months after IPH purchased Canada’s largest IP firm, Smart & Biggar. (more…)