On January 3, 2017, the 115th Congress officially convened. In the Senate, it will be the Senate Judiciary Committee where any action relating to intellectual property reform will play out during the 115th Congress. In the House of Representatives, it will be the House Judiciary Committee that will be the body of primary importance insofar as any intellectual property reforms are concerned. Unlike the Senate, in the House, the front line action will take place in subcommittee, specifically the Subcommittee on Courts, Intellectual Property, and the Internet will take the lead for the full House Judiciary Committee.
Unlike in previous years, we enter 2017 without much support for a fresh round of patent reform, but at least some patent reform measures are sure to be introduced during the 115th Congress. In fact, just recently Congressman Bob Goodlatte, who is once again Chair of the House Judiciary Committee, put forth his legislative agenda which included patent litigation reform. Senator Chris Coons (D-DE) is also talking about it being time for Congress to amend 35 U.S.C. 101.
Senator Chuck Grassley (R-IA), pictured left, will once again be chair of the Senate Judiciary Committee. Grassley is a strong supporter of the development of wind, solar, biodiesel, biomass and ethanol as a sustainable, domestic, renewable energy source, which is not surprising since he comes from the heart of America’s farmland. Grassley is a pragmatic politician. In April 2014, when large entities were pushing hard for the latest round of patent reform to pass, Grassley pumped the breaks, acknowledging that there were significant differences of opinion on the need for additional reform. “Sometimes it takes more time than we’d like, but, the end result is a better product. I’m willing to sacrifice a little time to develop a bipartisan bill that we can all support.” Grassley’s pragmatic approach slowed things down during the 113th Congress, but Grassley introduced the PATENT Act in the 114th Congress. Throughout the 114th Congress, Grassley’s staff was aggressively searching for stories about small businesses being abused by patent trolls, which he could use to give patent reform momentum. Such momentum never materialized, despite the fact that the PATENT Act was able to pass the Judiciary Committee. It is believed that Grassley remains supportive of patent reforms that most inventors would deem unacceptable. (more…)
Several months ago, respiratory health device developer ResMed Inc. filed multiple legal actions against Fisher & Paykel Healthcare. ResMed is alleging that multiple Fisher & Paykel products infringe upon its patents. ResMed filed actions with the U.S. International Trade Commission(ITC) and the U.S. District Court for the Southern District of California (S.D. Cal.), as well as courts in Germany and New Zealand.
ResMed argues that Fisher & Paykel is infringing upon patents it holds related to modular mask systems, headgear design, and cushion design for masks for sleep apnea patients. ResMed attempted to assert its rights on four particular patents in its portfolio.
In July 2010, MONKEYmedia filed a lawsuit for patent infringement in the U.S. District Court for the Western District of Texas (W.D. Tex.). The initial suit targeted American consumer tech giant Apple Inc. (amongst others) and targeted Apple’s use of user interfaces for document summarizations, video players and RSS readers which are capable of displaying multiple versions of text and/or audiovisual content.
MONKEYmedia’s complaint included five patents-in-suit:
- U.S. Patent No. 6177938, titled Computer User Interface with Non-Salience Deemphasis. It claimed a computerized system including a computer with a means for selectively shrinking the display of a first segment of objects to emphasize a second segment.
- U.S. Patent No. 6219052, same title as above. It claims a similar computerized system including a means for transforming a displayed object into shrunken and non-shrunken segments.
- U.S. Patent No. 6335730, same title. It also claims a computerized system using a relativity controller to selectively shrink a segment of objects and a scroll bar which changes in response to relativity controller activity.
- U.S. Patent No. 6393158, titled Method and Storage Device for Expanding and Contracting Continuous Play Media Seamlessly. It discloses a method for playing stored content which includes providing links to expansion content as the stored content plays.
- U.S. Patent No. 7467218, same title as ‘158 patent. It protects a computer-readable medium storing instructions to display content, provide links to expansion content and determine when such a link has been selected.
Six years of litigation later, an order of dismissal was filed indicating that both parties had settled their respective claims for relief filed in the case. A joint stipulation of dismissal was filed stating that both parties had stipulated to the dismissal of all claims and counter-claims asserted against each other. This comes about a year after MONKEYmedia had settled similar patent infringement claims against Sony Corporation, developer of the Blu-ray digital content standard which takes advantage of seamless expansion technologies covered by MONKEYmedia’s patents.
The defendants subsequently filed a motion for summary judgment of non-infringement of the ‘158 patent, the final patent remaining in the suit after patent reexaminations at the U.S. Patent and Trademark Office. In the motion for summary judgment, the defendants argue four points supporting their claim of non-infringement. First, they note that bonus content is available for an entire movie, not just segments of that movie. Second, the defendants argue that there are no expansion links in the movie content as defined by the claims of the ‘158 patent. Third, there is no fixed link from an expansion content to a continuing segment, so if a viewer wants to stop a movie to watch bonus content, that viewer has to actively choose to resume the movie. Finally, there are no cues to the bonus content which appear during the course of the movie; viewers must actively open menus and seek the content for themselves. The motion also includes definitions of Blu-ray technology features and descriptions of user interactions with those features by an expert witness, Mark R. Johnson.
MONKEYmedia filed a response in opposition to the summary judgment filed by the defendants. The response argues that the defendants are seeking a decision on the case “based on little more than the Court’s claim construction ruling, and without any evidence of non-infringement.” MONKEYmedia notes that, while Johnson’s expert witness declaration was attached to the motion, the witness did not put forward an actual opinion regarding non-infringement so much as a collection of observations made while watching a series of discs. The defendants’ assertion that the “links” and “segments” in Blu-ray content aren’t covered by claims of the ‘158 patent is based on an attorney argument and not by a qualified expert.
The case continues, but without Apple or Sony; both have now settled.
Several weeks ago, the United States Supreme Court granted certiorari in TC Heartland LLC v. Kraft Food Brands Group LLC. This case will force the Supreme Court to decide whether 28 U.S.C. § 1400(b) is the exclusive provision governing venue in patent infringement actions. This resolution of this question could have important ramifications, both for the future of patent litigation and for the future of patent reform.
Ultimately, the question that the petitioner really wants the Supreme Court to decide is if the Eastern District of Texas, home up to one-quarter of all patent infringement litigations, is a proper venue for patent owners to be choosing. The Eastern District of Texas is a popular choice among patent owners because of the perception that the district court has developed a articular specialty in handling patent matters, and because the judges have a reputation of giving patent owners a fair chance…maybe more than a fair chance, depending upon who you listen to.
If the Supreme Court issues a ruling that strikes down current patent venue rules, there would be no need for patent venue reform efforts to continue in Congress. On the other hand, if the Supreme Court were to affirm the Federal Circuit, calls for legislative venue reform would likely become deafening. On yet a third hand, patent reform might look very different than most people expect, even if the Supreme Court were to overrule the Federal Circuit, because a venue ruling that would make it difficult or impossible to bring cases in the Eastern District of Texas would also make it much more difficult for all patent owners to bring infringement cases in courts other than the home court of the defendant. That could be a bridge too far for many, if not most, patent owners, who otherwise might be in favor of at least some venue reform. Thus, there is a chance that whatever the outcome of this case, it will lead to patent reform. See The Politics of Patent Venue Reform.
The statutes in question will be 28 U.S.C. § 1400(b) and 28 U.S.C. § 1391(c). Pursuant to § 1400(b), a “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.” Pursuant to § 1391(c), a corporation is deemed to be a resident of “any judicial district in which such defendant is subject to the court’s personal jurisdiction…”
In Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), the Supreme Court held that § 1400(b) is not to be supplemented by § 1391(c) and that “§ 1400(b) is the sole and exclusive provision controlling venue in patent infringement actions….” While that might seem to end the inquiry on its face, the Federal Circuit has for 25 years ignored the Supreme Court ruling in Fourco Glass, based on the belief that 1988 amendments by Congress “rendered the statutory definition of corporate residence found in § 1391 applicable to patent cases.” Thus, it is the belief of the Federal Circuit that Congress overruled the Supreme Court’s ruling in Fourco Glass, which Congress obviously has the authority to do. See Supreme Court agrees to hear patent venue case with patent reform implications.
The irony is that everyone knows this case is about the Eastern District of Texas, yet the case between TC Heartland and Kraft Food Brands Group was litigated in the District of Delaware. Thus, Kraft is unfortunately caught up in this proxy patent battle to which it really ought not be a party. It is truly unfortunate that the Supreme Court would use a case from Delaware and party that is most certainly not a patent troll to opine about patent trolls running to the Eastern District of Texas. But that is the bizarro world of patent litigation in which we live, some might say.
Beginning in May 2016 with the Federal Court’s decision in Enfish, carrying over into the July decision in BASCOM, and then into the Court’s Fall decision in McRO (sometimes referred to as “the Blue Planet case”), the patent stakeholder community finally started receiving some much-needed guidance with respect to patent eligibility of computer-implemented inventions.
While decisions where claims have been ruled patent eligible have been helpful, decisions finding claims patent ineligible have been at least as informative, at least from a patent drafting standpoint. Indeed, as important as the aforementioned pro-patent-eligible decisions are two decisions where the Federal Circuit found the claims to be patent ineligible. In TLI Communications and then more recently in FairWarning IP, LLC v. Iatric Systems, Inc., the Federal Circuit distinguished the claims at hand from those that have been held patent eligible, which help identifies brighter lines and nuances of software practice.