Wednesday, May 31, 2017

Moving Forward After TC Heartland v. Kraft Foods

By: Russell Franks and Franklin Smith 

The Supreme Court’s recent opinion in TC Heartland, LLC v. Kraft Foods Group Brands, LLC, overturns almost three decades of Federal Circuit jurisprudence on the issue of  where a patent holder may properly file suit. In a unanimous decision authored by Justice Thomas, the Court held that a corporation “resides” only in its state of incorporation for purposes of determining proper venue under 28 U.S.C. § 1400(b). As a result, a patentee seeking to sue a domestic corporation may only do so in (1) where the alleged infringer resides (i.e., its state of incorporation) or (2) in a venue the alleged infringer has committed an infringing act and has a regular and established place of business. See 28 U.S.C. § 1400(b). This departs from previous precedent allowing an alleged infringer to be sued in any district where a company was subject to personal jurisdiction (i.e., any district where it had committed an infringing act was a “residence” under the statute for venue purposes). The previous rule permitted a cottage industry to spring up in districts viewed as patentee friendly, such as the notorious Eastern District of Texas. The Supreme Court’s ruling will render many patentee’s hopes of filing in the Eastern District of Texas a relic of the past.  

In TC Heartland, a patentee (Kraft Foods) brought suit against a competitor (TC Heartland) in the District of Delaware. TC Heartland, an Indiana corporation, challenged venue as improper by calling into question the term “resides” in 28 U.SC. § 1400(b).  The District Court held that the venue was proper on the basis that the allegedly infringing material was shipped into the state of Delaware, which was TC Heartland’s only connection to the state.  Following the traditional approach set forth in the Federal Circuit’s 1990’s VE Holding Corp. v. Johnson Gas Appliance Co., the District Court broadly construed “resides” based on the general venue statute, 28 U.S.C. §1391(c). This essentially provided that proper venue lies in any Court that holds personal jurisdiction. Because TC Heartland’s shipping of product into the state conferred personal jurisdiction, venue properly lied in Delaware. On appeal, the Federal Circuit affirmed the District Court’s ruling, holding its decision in VE Holding Corp. remained good law. The Supreme Court granted certiorari on the issue of where proper venue lies for a domestic corporation in a patent infringement action, i.e., where a domestic corporation “resides”. In reversing the Federal Circuit’s opinion, the Supreme Court held that “residence” as recited in the patent venue statute is limited to the state of incorporation.  In other words, the number of Courts that have proper venue over an allegedly infringing company has been substantially restricted. 

While it is too early to see the full effects of the Supreme Court’s holding in TC Heartland, we expect to see a few things.  First, many alleged infringers will seek to dismiss or transfer their venue based on this new standard.  Second, expect to see more patent infringement suits brought in the common states of incorporation and states that have recognized industries.  For example, there will likely be a greater number of cases brought in Delaware, a common state of incorporation, as well as in technological hubs like Northern California and Michigan with the automobile industry.  One thing is certain; the holding in TC Heartland will affect the flexibility that patent holders previously had with respect to choosing the jurisdictions viewed as most favorable. 

 Read the Opinion here.

Russell Franks is an Associate Attorney (IP Practice) in the Troy Office. Russell may be reached at 248-433-7574.
Franklin Smith is an Associate Attorney in the Troy Office. Franklin's Practice expertise covers Intellectual Property & Trade Secrets Litigation, Intellectual Property, Patents and Trademarks. Franklin's telephone number is 248-433-7393.

For docketing purposes of patent & trademark matters only, please add the appropriate email of or to any emails being sent to our office. Thank you.

Monday, May 29, 2017

Derek Crownover quoted in the New York Times Music Section

Derek Crownover (Member and Entertainment Law Practice Leader, Music Row) was recently quoted in the New York Times Music Section article, “Paramore Bounces Back With Old Faces and a New Sound.”  Derek Crownover, along with Hugh Howser (Member, Nashville), Dustin Kovacic (Associate, Music Row), Cam Caldwell (Of Counsel, Music Row) and John Krieger (Member, Las Vegas) represented Jeremy Davis, former founding member of the Grammy-award winning band Paramore, in concurrent state and federal litigation with the band and its managers and business managers over claims of implied partnership, fiduciary duty breaches, breaches of contract and copyright authorship. The article briefly discusses the litigation and Mr. Davis’s claims, quoting Derek to clarify the current status of the case.

Since the article was posted, Mr. Davis has settled his claims with all parties and continues to expand into new ventures as a solo musician and producer.

Please feel free to contact our attorneys.  In our Music Row office: Derek Crownover can be reached at 615-577-9602, Dustin Kovacic may be reached at 615-57-9608 and  Cam Caldwell can be contacted at 615-577-9610.  Hugh Howser is located in our Nashville office and his telephone number is 615-780-1102.  John Krieger may be contacted in our Las Vegas office at 702-550-4439.   

Thursday, May 25, 2017

Dickinson Wright Austin Office Celebrates World IP Day

The Austin office hosted a reception celebrating World IP Day on May 3rd at Westwood Country Club, in Austin, TX.  Attendees were treated to interesting presentations by UT’s Austin’s 2016 Emerging Inventor of the Year, Dr. Hal Alper, who discussed his metabolic hijacking research and Dr. Nanshu Lu, who was recognized by MIT as one of the world’s top 35 innovators under the age of 35, who discussed her research in the field of wearable electronics. Distinguished UT Professor Bone also chimed in on the role of intellectual property law in innovation and a regional representative from the USPTO spoke on the World IP Day initiative. Alison Frey (Member, Austin) organized and emceed the event. It was a well-attended event, drawing people from both the legal and business communities, and even local students. A great time and plenty of fun was had by all!

Monday, May 22, 2017

3 Steps to Protect Trade Secrets Under the DTSA

Nashville Attorney Autumn Gentry recently wrote “3 Steps to Protect Trade Secrets Under the DTSA,” for Inside Counsel.
The Defend Trade Secrets Act (DTSA), which went into effect last year, was a breath of fresh air for many companies that rely on trade secrets as part of their business model.
Under the DTSA, a business’s or individual’s trade secrets — such as copyrights, patents and trademarks — are federally protected. This federal protection allows a business to file a private civil lawsuit if a trade secret that is related to a product or service used in, or intended for use in, interstate or foreign commerce is misappropriated.
Prior to the DTSA, trade secrets law was a state issue, and most states adopted some version of the Uniform Trade Secrets Act (UTSA) to protect their local businesses. However, the interpretation of these laws varied greatly from state to state.
The DTSA adopts many provisions from the UTSA, such as injunctive relief to prevent actual or threatened misappropriation; actual damages; and exemplary damages and attorneys’ fees for willful and malicious misappropriate. 
However, unlike the UTSA, the DSTA also:
  • Provides businesses access to federal courts, regardless of the amount in controversy;
  • Permits ex parte seizures where injunctive relief is clearly shown to be inadequate;
  • Grants whistleblowers who disclose trade secrets to the government immunity from civil and criminal liability in certain situations;
  • Mandates that notice about whistleblower immunity be included in any new or updated employment agreement that governs the use of a trade secret or other confidential information.
In order to be protected by the DTSA, businesses or individuals must demonstrate that they have taken steps to keep their trade secrets private.
To read the complete article, please click here (subscription needed).
Autumn Gentry is an attorney with the Nashville office of Dickinson Wright, PLLC. She focuses her practice in commercial law and litigation. Autumn can be reached at 615-620-1755


Monday, May 15, 2017

IP Litigation Attorney Highlights Michelle Alamo - Focused on Complex Business and Patent Litigation

Michelle L. Alamo, a member in Dickinson Wright PLLC’s Detroit office, focuses on Complex Business and Patent litigation in federal courts in Michigan and elsewhere, as well as the International Trade Commission (ITC).  Her practice includes patent infringement, antitrust, RICO, Federal false claims, ERISA, government investigations, class actions, and e-discovery matters involving the automotive, telephone, construction, and insurance industries.   

Michelle’s unique expertise with Section 337 Investigations before the ITC includes successfully trying two Section 337 case to conclusion in 2014 along with her Dickinson Wright IP colleagues.    

An electrical engineer by background, complex litigation is a natural fit for Michelle.  She is also Committee Chair of DRI’s Intellectual Property Litigation Committee. 

Outside of the legal arena, Michelle is a three-time Ironman and is currently training for her fourth Ironman to be held in Lake Placid, New York.

Please feel free to contact Michelle Alamo (Member, Detroit) at 313-223-3875.

Wednesday, May 10, 2017

A Powerful Weapon Against Infringing Imports

By: Jonathan Redway

Jonathan Redway (Member, Washington, D.C.) wrote an article titled "A Powerful Weapon Against Infringing Imports," which was published in Today's General Counsel.  The article focused on Section 337 of the Tariff Act of 1930 and how it remains the single most powerful and reliable weapon a company can use to protect its United States intellectual property against infringing imports. Under Section 337, the U.S. International Trade Commission conducts investigations into allegations of certain unfair practices in import trade. Mr. Redway also explains the effectiveness and advantages of Section 337 Enforcement Proceedings when it comes to intellectual property.  Read the entire article here.

Jon is a nationally recognized trial lawyer with extensive experience handling a wide variety of complex civil and intellectual property cases. Jon regularly works with businesses and individuals on cases involving patent and trademark infringement, the seizure of counterfeit goods, misappropriation of trade secrets, copyright infringement, as well as business torts and various regulatory matters. Jon may be reached in our Washington, D.C. office at 202-659-6946.

Friday, May 5, 2017

10 Years Of KSR: A Shift In Patent Drafting

By  John S. Artz, Franklin Smith and Russell Franks

Sunday marked 10 years since the U.S. Supreme Court issued its ruling in KSR International Co. v. Teleflex Inc., rejecting the test that was used by the U.S. Patent and Trademark Office, patent attorneys and district courts for determining if a patent is too obvious. This weeklong Law360 Expert Analysis series explores the decision's effect on obviousness analysis and the patent landscape.


In the Patent Act of 1790, U.S. lawmakers struggled to provide a concise, objective standard of patentability, and it wasn’t until 30 years later that the U.S. Supreme Court first weighed in through dicta on the issue of “inventiveness” — or modern day “obviousness.”[1] It remains a mystery whether or not the Supreme Court justices were aware of the rabbit hole they were entering. Since then, lawmakers have attempted to both understand and provide clear guidance when analyzing whether a potential invention is obvious. Unfortunately, efforts to define obviousness have often resulted in further confusion.

Read the entire insightful article here.

John S. Artz (Member, Troy) and co-chairs the Intellectual Property Section of the Federal Bar Association for the Eastern District of Michigan. John may be reached at 248-433-7262.  Franklin M. Smith (Associate, Troy) may be reached at 248-433-7393 and Russell F. Franks (IP Law Clerk, Troy) may be reached at 248-433-7574.

Wednesday, May 3, 2017

Federal Circuit Clarifies Post-America Invents Act “On-Sale” Bar Based on Publicly Announced Sale Agreements: Invalidates Four Anti-Nausea Drug Patents

By Michelle Alamo
On May 1st, the Federal Circuit ruled that the America Invents Act (AIA) did not change the statutory meaning of “on sale” where the existence of a sale was publicly announced prior to patenting, even if the sale did not publicly disclose the invention. 

The lawsuit involved a claim by Helsinn Healthcare S.A. (Helsinn) against Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries, Ltd. (“Teva”) alleging that the filing of an Abbreviated New Drug Application (ANDA) related to an intravenous formulation for reducing the likelihood of chemotherapy-induced nausea and vomiting infringed four of Helsinn’s patents related to the same. In defense, Teva argued, among other things, that the asserted claims were invalid under the on-sale bar set forth in 35 U.S.C. § 102.  

The district court rejected Teva’s defense, finding that with respect to three of the patents, which were governed by the pre-AIA version of § 102, although there was a commercial offer for sale before the critical date, the invention was not ready for patenting before the critical date. With respect to the fourth patent, which was governed by the AIA version of § 102, the district court concluded that there was no commercial offer for sale because the AIA changed the relevant standard and that, in any event, the invention was not ready for patenting before the critical date. 

The Federal Circuit reversed, finding that all of the asserted claims of the patents-in-suit were subject to an invalidating contract for sale prior to the critical date, that the AIA did not change the statutory meaning of “on sale” in the circumstances involved there, and that the asserted claims were ready for patenting prior to the critical date.   

With respect to the statutory meaning of “on sale” after the AIA, the Federal Circuit rejected the argument that the post-AIA on-sale bar did not encompass “secret sales,” meaning sales that did not make the invention available to the public, as well as the argument that the details of the claimed invention be publicly-disclosed in order to trigger the on-sale bar.  As the Federal Circuit explained in rejecting Helsinn’s arguments: 
A primary rationale of the on-sale bar is that publicly offering a product for sale that embodies the claimed invention places it in the public domain, regardless of when or whether actual delivery occurs. The patented product need not be on-hand or even delivered prior to the critical date to trigger the on-sale bar. And, as previously noted, we have never required that a sale be consummated or an offer accepted for the invention to be in the public domain and the on-sale bar to apply, nor have we distinguished sales from mere offers for sale. We have also not required that members of the public be aware that the product sold actually embodies the claimed invention. (Footnotes omitted).

Relying on prior precedent, the Court concluded that “after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale.” 

The Federal Circuit, however, cautioned that “we do not find that distribution agreements will always be invalidating under § 102(b).”  Rather, they simply found the particular agreement at issue was invalidating in that case, thus confirming, once again, that whether the on-sale bar will apply in a particular case remains a case-by-case inquiry based on the facts of the particular case.  For a copy of the Federal Circuit’s opinion, click here.

Michelle Alamo (Member) may be reached at the Detroit office at 313-223-3875.

Monday, May 1, 2017

Dickinson Wright Successfully Stays Patent Action Pending Ex Parte Reexamination

By:  Bryan Schomer and Frank Smith

On April 26, 2017, Dickinson Wright attorneys Bryan Schomer and Frank Smith successfully obtained a stay on behalf of their client, Detroit Edge Tool Co. (DETCO), in a patent infringement matter filed by Genesis Attachments, LLC.   After exchanging infringement and invalidity contentions, the parties engaged in discussions seeking to resolve the lawsuit. Upon failing to reach a resolution, DETCO commissioned Dickinson Wright to prepare and file an ex parte reexamination petition with the USPTO requesting the USPTO cancel all claims of the patent-at-issue in view of the relevant prior art. Less than three-weeks after filing the petition, the USPTO instituted ex parte reexamination of all claims of the patent-at-issue on all asserted grounds of invalidity. Counsel then jointly moved the Court to stay all litigation proceedings pending the outcome of the USPTO's reexamination, with the stay being granted on April 26, 2017. The stay of litigation comes as the parties are preparing to serve expert reports and beginning preparation of Markman claim construction briefing. The stay allows the parties, and the Court, to benefit from the USPTO's expertise with respect to the validity and scope of the patent-at-issue.

Please feel free to contact Bryan Schomer (Member, Troy) at 248-433-7529 or Frank Smith (Associate, Troy) at 248-433-7393.