Monthly Archives: March 2016

VENUE: Will Texas Lose its Dominance as a Patent Venue? Fed. Circuit Tackles Venue in the “Heartland” Case

 

FEDERAL CIRCUIT HEARS ORAL ARGUMENT IN “HEARTLAND” CASE ON MAJOR VENUE ISSUE

Posted by Henry M. Sneath, Esq. – Chair of the Intellectual Property Group at Picadio Sneath Miller & Norton, P.C. (PSMN® and PSMNLaw®) in Pittsburgh, Pa. He may be contacted at hsneath@psmn.com or 412-288-4013. Website www.psmn.com or www.psmn.law

Federal CircuitYesterday the Federal Circuit heard oral argument on the mandamus petition filed by TC Heartland in an underlying case lodged in the District Court of Delaware ( The underlying case is Kraft Foods Group Brands LLC v. TC Heartland LLC, case number 1:14-cv-00028, in the U.S. District Court for the District of Delaware). The outcome could either keep the status quo where Texas is the venue of choice for an inordinately large number of patent infringement filings, or force courts to adopt a different standard for evaluating proper venue. Texas, Delaware and the Northern District of California receive the majority of patent case filings, but Texas gets over 40% of all filings alone. Heartland, as sued by Kraft Foods, is headquartered in Indiana and believes that the case should be lodged in their home jurisdiction and not where they have little or no business contact in Delaware – beyond sales of product. On a challenge to venue, the District Court used the currently applied standard finding “venue is appropriate for a defendant in a patent infringement case where personal jurisdiction exists.” Heartland argues that the Federal Courts Jurisdiction and Venue Clarification Act of 2011 effectively repealed the Federal Circuit’s 1990 ruling in VE Holding v. Johnson Gas Appliance that patent suits can be brought anywhere a defendant makes sales. In other words, that personal jurisdiction and venue are essentially the same. Heartland, in its mandamus petition ( https://www.eff.org/files/2015/10/28/in_re_tc_heartland.pdf ) has asked the Federal Circuit to reevaluate the VE Holding case along with certain Congressional venue legislation and the overall venue issue.

Here are a couple of resources to assist you in following this case. The great blog at Patently-O has written on Heartland: http://patentlyo.com/patent/2015/10/defendant-jurisdictional-infringement.html

See also a fascinating study of what would happen to patent case filings if the Federal Circuit changed the venue standard: From Patently-O: Guest Post: What Would Happen to Patent Cases if They Couldn’t all be Filed in Texas? March 11, 2016 PatentJasonRantanen by Colleen Chien, Santa Clara University Law School and Michael Risch, Villanova University Charles Widger School of Law

Sneath Headshot  Henry M. Sneath, Esq.

 

                        

 

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Federal Circuit Recognizes Patent Agent Privilege

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Federal CircuitThe Federal Circuit recently decided an interesting case about whether there should be a patent agent-client privilege. In In re: Queen’s University at Kingston (Case No. 14-145), the Federal Circuit concluded that there should be such a privilege in a 2-1 decision written by Judge O’Malley (Judge Lourie joined the decision, and Judge Reyna dissented).

Background

Queen’s University in Kingston, Ontario, Canada filed a patent infringement lawsuit against Samsung Electronics Co., Ltd. in the Eastern District of Texas. During discovery, Samsung sought to discovery certain communications between Queen’s University employees and its registered patent agents. The district court granted a motion to compel, finding, in part, that there was no patent agent privilege. Queen’s University filed a petition for writ of mandamus with the Federal Circuit challenging the order.

Analysis

The Federal Circuit first determined that its law, and not the law of the regional circuits or state law should apply to determine whether a patent agent privilege might exist because the issue relates to patent-specific subject matter. It also noted that the issue was one of first impression at the Federal Circuit, but was one where there is conflicting authority at the district court level.

The Court then decided that it was appropriate to consider the writ given that once the documents were produced, there would be no easy way to undo the damage if a privilege existed. The Court also noted that the district court split on the subject favored it providing some clarity on the issue. The Federal Circuit then turned to the issue of whether it should recognize a patent agent privilege.

The Court found that Rule 501 of the Federal Rules of Evidence authorizes federal courts, in appropriate circumstances, to recognize new privileges. It further noted that it did so with some caution, as privileges restrict the flow of information and should not be created lightly.

The Court then looked to the Supreme Court’s decision in Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), in which the Supreme Court recognized that patent agents perform acts that constitute the practice of law and that the regulation of patent agents is solely governed by the US Patent and Trademark Office.

In looking at the Supreme Court’s analysis in that case, the Court traced the history of patent agents and the nature of their work before concluding that a limited patent agent privilege is appropriate.

The Court next turned to what the scope of that privilege should be. Not all communications with a patent agent can be privileged.

Communications between non-attorney patent agents and their clients that are in furtherance of the performance of these tasks, or “which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate” receive the benefit of the patent-agent privilege.
Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege. For instance, communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not “reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.”

Based on the recognition of this new privilege, the Court grant the petition for a writ of mandamus, vacated the district court’s order on the motion to compel, and remanded for further consideration.