On September 7, 2018, RPX Corporation (“RPX”) requested a rehearing en banc of the Federal Circuit’s July 2018 Applications in Internet Time, LLC v. RPX Corp. decision, which held that the Patent Trial and Appeal Board (“PTAB”) must use a flexible approach when determining what entities constitute real parties in interest for the purpose of inter partes review (“IPR”). See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (July 9, 2018) (“Internet Time”). Petitioners for IPR challenging a patent must identify all real parties in interest in their petition. 35 U.S.C. § 312(a)(2). The Director is not authorized to institute trial on the petition if the petitioner, real party in interest, or privy of the petitioner, was served with an infringement complaint for the patent in question more than one year before the petition’s filing. See 35 U.S.C. § 315(b).
Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation. In Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot, IPR2018-00761 (“the ’761 IPR”), the Board applied the General Plastic factors and exercised its discretion pursuant to 35 U.S.C. § 314(a) and denied institution against iRobot’s U.S. Patent No. 7,155,308 (“the ’308 Patent”). The ’308 Patent was also the subject of an unsuccessful challenge in IPR2017-02078 (“the ’2078 IPR”), which was filed months earlier. The Board found that although petitioners in the ’761 IPR and the ’2078 IPR were not the same or related entities, denial was appropriate because the entities were co-respondents in a related patent infringement Investigation brought by iRobot at the International Trade Commission (“ITC”), Inv. No. 337-TA-1057. In a concurrence, one patent judge advanced the notion that in addition to current considerations, the Board should add a factor that asks whether petitioners are co-defendants in a patent litigation where the challenged patent is asserted.
Late last week, in Worlds, Inc. v. Bungie, Inc., the Federal Circuit held that the Patent Trial and Appeals Board (“Board”) must place the burden of persuasion on the Petitioner to show it has named all real parties in interest (“RPIs”) once the patent owner produces some evidence that RPIs were not named. While the question of what entities are RPIs is itself interesting and is currently working its way through the courts as specific fact patterns are considered case-by-case, this particular case dealt specifically with the question of who bears the burden of proving that all RPIs are named in a petition for inter partes review (“IPR”).
On October 1, 2018, Massachusetts will become the 49th state to adopt a version of the Uniform Trade Secrets Act. The version of the UTSA that Massachusetts will adopt bears notable similarities to the Defend Trade Secrets Act, the two year old federal trade secrets statute. For example, both statutes allow for injunctive relief to prevent any “actual or threatened misappropriation,” and both statutes also provide that a trade secret can be information that provides “actual or potential” economic value from not being generally known. Continue Reading Massachusetts Adopts Uniform Trade Secrets Act
Most people are familiar with blockchain technology because of its use in cryptocurrency, but its use is going to be far more widespread than just as a ledger for digital currency. As explained in a previous blog post, blockchain technology is expanding into almost anywhere that information is stored, and companies are filing increasing numbers of blockchain-related patent applications each year.
In our continued post-TC Heartland coverage, the Southern District of New York recently held that an employee’s home office in New York constituted a “regular and established place of business” in the state as required by the patent venue statute, 28 U.S.C. § 1400(b). RegenLab USA LLC v. Estar Technologies Ltd. et al., 16-cv-8771 (S.D.N.Y. Aug. 15, 2018). In RegenLab, the court found that defendant Eclipse’s business model required its employees to work out of their homes, thereby ratifying a worker’s home in the Southern District as a place of business under In re Cray, despite Eclipse’s failure to satisfy venue otherwise.
The Patent Trial and Appeal Board (PTAB) issued an August 2018 update to the American Invents Act Trial Practice Guide (the “Updated TPG”). The Updated TPG incorporates the PTAB’s current practices and provides further explanation of certain aspects of the PTAB’s standard practices to the public. Most significantly, the Updated TPG abolishes “observation” practice and replaces it with sur-reply brief practice.
In our continued post-TC Heartland coverage, Judge Gilstrap in the Eastern District of Texas recently held that venue was proper because Google exercises exclusive control over physical servers implicated by the litigation, as well as the physical space within which the server is located and maintained. The court emphasized that the place where the server is located occupies a physical space, which is more than merely a virtual space or electronic communications from one person to another. In additional to occupying physical space, Google exercises exclusive control over the digital aspects of the third-party that hosts the server.
Google retains more control over the server than under a general lease arrangement. For example, Google requires its third party ISPs to provide “rack space, power, network interfaces, and IP addresses . . . in consultation with Google . . . remote assistance and installation services . . . network access between the Equipment and Host network subscribers . . .” The ISP agreement makes it clear that the ISP does not own the server(s)–Google does. Google’s ownership of the server and its contents is absolute, as is Google’s control over the server’s location upon installation. Accordingly, the server itself and the place where it is physically housed, both independently and together, met the statutory requirement of a “physical place” sufficient to confer proper venue.
Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims. Examples include claim amendments and statements made by the applicant during prosecution in papers filed with the U.S. Patent and Trademark Office (USPTO). Less common are scenarios in which prosecution history estoppel may limit a U.S. design patent’s claims. The Federal Circuit’s recent decision in Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co. provides one scenario where prosecution history estoppel for a design patent was a key issue in claim interpretation.
Is there any possible danger in using the abbreviation “i.e.” in the specification of a U.S. patent application? The Federal Circuit’s recent decision in TF3 Limited v. TRE Milano, LLC shows that the answer is “yes.” The court provided a reminder that use of “i.e.” in the specification signals an intent to define the term to which it refers. Thus, the court held that the term cannot be interpreted to be broader than the definition provided in the specification by the use of “i.e.” when interpreting the term under the broadest reasonable interpretation standard before the U.S. Patent and Trademark Office.