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Justin T. Beck Robert B. Morrill Brian E.

Mitchell January 23, 2012

Venue (cont.) Pleadings Procedures within the PTO

ON-LINE - Delaware corporation doing business only in Massachusetts MICRONET California ISP selling all over the world through an interactive web site ON-LINE sent a cease and desist letter re 111 patent Negotiations failed, ON-LINE set a January 1, 2007 date for suit Today is January 16 Litigation options?
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CA, WA, NY What about MA?

Where can ON-LINE file suit?


Has MICRONET sold goods over the internet to MA residents? Mere offer is not enough

MA, DE What about California? ON-LINE store in CA closed two years ago?

Where can MICRONET sue for declaratory relief?

Discretionary Multiple factors Not appealable

Is there personal jurisdiction? Forum Non Conveniens (28 USC 1404)?

Is mandamus available?

Available in extraordinary circumstances to correct a clear abuse of discretion or usurpation of judicial power where no other means of obtaining the relief desired

Fifth Circuit law applies Volkswagen II Ohio more convenient for witnesses and evidence No connection to Texas Stretches logic to say local interest weighs against transfer where rationale could apply to any district Mandamus available where 1404(a) transfer denied

Forum Non Conveniens (28 USC 1404)?

In re Genentech, 556 F.3d 1338 In re Hoffmann-La Roche, 587 F.3d


(Fed.Cir. 2009 1333 (Fed. Cir. 2009) In re Nintendo, 589 F.3d 1199 (Fed. Cir. 2009) In re Link_A_Media, 662 F.3d 1221 (Fed. Cir. 2011) (applying 3rd Circuit law)Media, 662 F.3d 1221 (Fed. Cir. 2011) (Applying Third
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Original bill had venue provision similar to TS Tech rule, but provision was dropped because Federal Circuit viewed as doing a good job in forcing the Eastern District of Texas to transfer cases out

Venue left unchanged

Trolls had brought suits in EDTX against multiple corporations doing business nationally AIA bars joinder of unrelated defendants in one patent suit, effective immediately Must bring multiple suits, which cannot be consolidated for trial
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Change in joinder law

Common tactic today is to file dozens of single defendant suits, and seek consolidation for pretrial purposes under Rule 42(a) If suits must be filed in different districts for venue purposes seek centralization under 28 U.S.C. 1407
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Blue Spike filed 60 suits in 12 different districts

Venue (cont.) Pleadings Procedures within the PTO

Check for conflicts Patent ownership and if there is a license agreement, who has the rights to sue Review file wrapper Interview inventors Study infringing product and prepare claim chart Select defendants Analyze potential defendants patent portfolios
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Select forum Determine what relief is available Determine best timing for suit Estimate time to trial Analyze preliminary injunction situation Estimate costs and prepare budget Determine staffing Select experts

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Four main areas:


Jurisdiction and venue Statement of claim showing entitled to relief Request for relief (prayer)

JURY

DEMAND
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Tried and true is best Styles

Short, Sweet and Simple (and uninformative) Grand (the marketing tool)
Seldom used Standard practice today

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Right to sue/ownership Identification of patent(s) attach Act of Infringement

Type of infringement direct, contributory, inducement description Marking or notice? Willfulness?

Sale, offer for sale, use, manufacture, or importation

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Identification of patent(s) - attach Basis for jurisdiction


Accusations of invalidity, noninfringement, unenforceablity

A controversy Activity which could constitute infringement

Must plead unenforceablity with specificity

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Possible elements of relief:


Adjudication of infringement Injunction Damages, plus interest Exceptional case willfulness
Attorney fees Enhanced damages

Costs Other just and proper relief

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Bare legal assertions insufficient Factual allegations must be plausible But what about Form 18?

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3. The defendant has infringed and is still infringing the Letters Patent by making, selling, and using electric motors that embody the patented invention, and the defendant will continue to do so unless enjoined by this court.

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1354 (Fed. Cir. 2007) (Compliance with Form 18 sufficient) Does the Model complaint comply with Form 18? In re Bill of Lading, 681 F.3d 1323 (Fed. Cir. 2012) (Only direct infringement is covered by Form 18)

McZeal v. Sprint Nextel, 501 F.3d

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continues to infringe; has induced and continues to induce others to infringe; and/or has committed and continues to commit acts of contributory infringement of, one or more of the claims of the 873 patent.

8. Rainbow has infringed and

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8. (cont.) Rainbows infringing activities in the United States and this District include development, manufacture, use, sale, and/or offer for sale of certain compartmentalized food packages with rigid bases. Such infringing activities violate 35 U.S.C. 271. Upon information and belief, such infringement has been, and continues to be, willful.
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Jury Demands

80 70 60 50 40 30 20 10 0 1979 1986 2005

% of Patent Cases Tried to Jury (1979-2005)


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Currently, a jury is demanded in 78% of all patent cases filed Trial by jury in 70% of all patent cases

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Do juries harbor biases or prejudices? Are jurors more likely to (1) defer to or (2) second-guess the PTO? What is the composition of an average jury? Is a jury competent to decide patent cases?

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Injunction Good Judge


Speed Cost

Unlikable Witnesses/Parties Technical or Complex Issues

Skill Identifiable bias

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Motion to Dismiss - 12(b)

Motion for a More Definite Statement 12(e) Motion to Strike


Accused products Specific claims

Procedural flaws Joinder Failure to allege ownership, no controversy

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Answer Answer + counterclaim Answer + third party claim Motion to Dismiss/Transfer

Jurisdiction Venue

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Reply to Counterclaim Motion for a More Definite Statement 12(e)


Motion to Strike 12(f)

Inequitable conduct; boilerplate affirmative defenses Used to challenge sufficiency of affirmative defenses

LAST

CHANCE TO DEMAND A JURY

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Invalidity

Unenforceability
Inequitable conduct Misuse

101 102/103 112

License/Waiver/Estoppel Laches/Statute of Limitations Non-infringement?

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Ask yourself :

Can the plaintiff fix the problem?

Are you going to win? What are you going to win? Will your client be better off in the end?

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Rule: A more definite statement is appropriate where the complaint fails to identify any particular product alleged to infringe Defendant sells extruded aluminum cladding for entry door frames and garage door frames of various sizes and configurations. Certain of these products are at issue in this case. Defendant moves for a more definite statement. What result?

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Rule 12(e) relief is appropriate where the complaint fails to identify any allegedly infringing product or at least set forth a limiting parameter Plaintiff may not make up for inadequate pleading through discovery Unreasonable to require defendant to compare 40 products to the 20 claims of the 433 patent

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Without a more definite statement, plaintiff may seek discovery of defendants entire line of products If plaintiff cannot identify a particular product, there is reason to doubt whether its Rule 11 certification is true

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Venue (cont.) Pleadings Procedures within the PTO

Preissuance Submission Post Grant Review Ex parte Reexamination Inter partes Reexamination Review Supplemental Examination Reissue Most AIA changes effective 9/16/2012

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Lower burden of proof Inexpensive Intervening rights But

Slow Problem prior art can be cleansed by the patentee Third party requestor may be estopped from using the prior art or any available art later

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Third party may submit prior art during examination

Before allowance and within 6 months after publication Patents and printed publications Statement of relevance Effective for applications filed more than a year after the AIA effective date No estoppel No action by PTO required

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New PTO procedure for patentee only Request PTO to consider, reconsider or correct information relevant to the patent Concluded in three months

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If a substantial new question of patentability, PTO reexamines the patent Insulates the patent against inequitable conduct charges, but

Cannot cure existing fraud allegations If the PTO becomes aware of fraud, it may cancel claims and confidentially refer the case to the Attorney General for criminal prosecution

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Third party may challenge validity before Patent Trial and Appeal Board within nine months of patent issuance
Any ground of invalidity More likely than not at least one claim unpatentable PTO must decide in one year (+ 6 months for good cause) Limited discovery Limited right to amend Estoppel

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Two types

Limited to prior art patents or printed publications Substantial new question of patentability A reasonable likelihood . . . requestor will prevail with respect to at least one claim

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Ex parte reexamination Inter partes reexamination review

Patentee or third party may initiate anytime after issue Benefits to patent owner
Can add new claims, if narrower than original claims Friendly forum If the patent survives reexamination, it will be a stronger patent No third party participation after petition filed Inexpensive

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Benefits to accused infringer


Litigation may be stayed Intervening rights/damages if claims amended Anonymity No estoppel No presumption of validity

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Only a third party can initiate

After nine month post-grant review period is over and Within one year of suit by patent owner For applications filed over 1 year after AIA date Reasonable likelihood requester will prevail on one claim?

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Third party may participate, answering each paper filed by the patentee

Estoppel - third party may not raise invalidity prior art in district court if could have been raised in the inter partes reexamination Very limited discovery Limited right to amend PTO must decide within one year (+ 6 months for good cause)

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Inter Partes

94% of requests granted Of those granted:

42% - all claims rejected 47% - claims amended 11% - all claims confirmed

92% of requests granted Of those granted:

11% - all claims rejected 67% - claims amended 22% - all claims confirmed

Ex parte
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Statistically, the inter partes reexamination proceeding has favored the requestor by a margin greater than 2-to-1. Thus, the procedure has been remarkably effective at eliminating invalid patents. But, anecdotal evidence suggests that the PTO has tightened up on invalidating patents in reexamination
Non-scientific survey, 2010
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Bromberg & Sunstein LLP, April 2007

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