View
218
Download
0
Category
Preview:
Citation preview
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
1/48
Deposition MechanicsSeptember 27, 2007
Brian Mitchell
Justin T. Beck
Robert B. MorrillBrian E. Mitchell
January 16, 2012
GOLDEN GATE UNIVERSITY SCHOOLOF LAW:
JURISDICTION, VENUE AND PARTIES
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
2/48
AGENDA
Declaratory judgment actions
Prefiling Investigation (Rule 11)
Subject matter jurisdiction
Personal jurisdiction
Venue
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
3/48
AGENDA
Declaratory judgment actions
Prefiling Investigation (Rule 11)
Subject matter jurisdiction
Personal jurisdiction
Venue
3
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
4/48
Declaratory Judgment Action
Defensive declaratory judgment
Brought as a counterclaim (shield)
Offensive declaratory judgment
Brought as an original suit (sword)
4
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
5/48
Declaratory Judgment Action
There must be an actual case or
controversyTwo part test before 2007: (1)
objectively reasonable apprehensionof suit and (2) activity that constitutesinfringement (or concrete steps)
5
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
6/48
6
MedImmune v. GeneTech (2007)A patent licensee may sue for a declaration
of invalidity or non-infringement without firstbreaching the license.
Change in the reasonable apprehension
test? Seefootnote 11.
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
7/48
7
SanDisk v. STMicro
The Supreme Court's opinion inMedImmune represents a rejection of our
reasonable apprehension of suit test.Even ST's statement that it does not
intend to sue does not moot the actual
controversy created by its acts. (Opinionof the court)
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
8/48
8
SanDisk v. STMicro (cont.)
[U]nder the court's standard virtually any
invitation to take a paid license relating tothe prospective licensee's activities wouldgive rise to an Article III case orcontroversy if the prospective licensee
elects to assert that its conduct does notfall within the scope of the patent.(Concurring Opinion)
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
9/48
The patent owner can file suit first, and
then send the demand letter or draftlicense. Drawbacks?
How to Avoid Declaratory Relief?
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
10/48
10
A Race to the Courthouse
The first-filed action generally controls
Meaningful preparation for infringementand some assertion of the patent needed
Acts up to the filing of the complaint areconsidered
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
11/48
AGENDA
Declaratory judgment actions
Prefiling Investigation (Rule 11)
Subject matter jurisdiction
Personal jurisdiction
Venue
11
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
12/48
12
Plaintiffs Prefiling Investigation Rule 11
Ownership analysis
Claim interpretation
Reasonable efforts to determine if accusedproduct meets all claim limitations
Claim charts encouraged but not required
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
13/48
Cannot rely solely on clients analysis
Not required: Validity analysis Why?
Best practice: Prepare a detailed file
memo
Plaintiffs Prefiling Investigation
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
14/48
14
Def.s Prefiling Investigation Rule 11
Affirmative allegations have (or are likely
to have after discovery) evidentiarysupport E.g., invalidity
Denials are warranted by facts or made onlack of information E.g., noninfringement
SeeMetcalf, Satisfying Rule 11 Prior toInitiating Patent Infringement Claims 7 FED CIRCUIT B.J. 321, 327 (1997)
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
15/48
15
Judin v. United States
Judin/Van Der Walls investigation:
Observed the accused device in a post office from adistance
Did not attempt to obtain a device
Did not reverse engineer a device Did not interpret any claim terms
Did not read the claims on the device
Did not consult with an expert
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
16/48
16
Judin v. United States
Holding:
Rule 11 requires investigation before, not after, filing acomplaint
No effort to obtain an accused device and noexplanation for failing to do so
Attorney was unreasonable in giving blind deferenceto his client
Post-filing consultation with an expert does not curepre-filing failure
Trial court abused discretion in not sanctioning Judinand Van Der Wall
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
17/48
17
Problems Pages 89-90
1. Suggest filing a declaratory relief suit to
FAST? BIPOLAR letter offering a license
BIPOLAR suits against others
BIPOLAR trade secret suit against FAST
Mere offer of a license, no threat to sue, no reasonableapprehension
Likely SanDiskdeclaratory relief jurisdiction
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
18/48
18
Problems Pages 89-90
Additional facts
Generic threat to sue Rumor of suit by BIPOLAR
Customer threats
What result?
Still more facts
A face to face negotiation will be held next week
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
19/48
19
Problems Pages 89-90
3. Crows letter:
Identifies infringing products
Identifies the patents
Threatens to sue
Tractors-R-Us options?
Declaratory relief suit?
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
20/48
Crows options on Green II?
Now Contributory or inducedinfringement, T-R-U only sells blades, withadvice
Green II will directly infringe
Wayne can sue distributor Smith on thesame theories
Problems Pages 89-90
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
21/48
AGENDADeclaratory judgment actions
Prefiling Investigation (Rule 11)
Subject matter jurisdiction
Personal jurisdiction
Venue
21
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
22/48
22
Subject Matter JurisdictionDistrict Court has exclusive jurisdiction of
actions arising under the patent laws Action for malpractice related to patents?
Patent issues first raised in a state court counterclaim?
International Trade Commission
Jurisdiction over imports if patent holder has adomestic industry
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
23/48
23
International Trade Commission
Administrative court located in Washington,DC
Has own rules and judges (ALJs)No jury
No money damages
ALJ decision reviewed by Commission
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
24/48
Remedy (exclusion order banning imports)
reviewed by PresidentAppeal to Federal Circuit
Parallel District Court actions often stayed
FAST
International Trade Commission
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
25/48
AGENDADeclaratory judgment actions
Prefiling Investigation (Rule 11)
Subject matter jurisdiction
Personal jurisdiction
Venue
25
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
26/48
26
Personal JurisdictionGeneral Jurisdiction
Is defendant doing business in the jurisdiction?
Special Jurisdiction Did defendant direct activities at forum residents?
I shot an arrow into the air, It fell to earth, I knew not
where Did the claim arise out of those activities?
Is the exercise of jurisdiction reasonable?
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
27/48
27
Where Does a Corporation Reside?
Federal Circuit law governs
Test is whether defendant can be served: Do minimum contacts exist?
Is service proper under forum states long arm statute?
A major corporation may reside in all 50states
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
28/48
28
Beverly Hills Fan v. Royal Sovereign
Selling a product into the forum through
intermediaries is considered to bepurposeful shipping of the product into the
forum state
Does the sale in the forum arise, directly or indirectly,
from the efforts of the accused infringer to serve themarket for its product in the forum state?
Could the accused infringer placing its product into thestream of commerce reasonably anticipate being hauled
into court in the forum?
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
29/48
29
Beverly Hills Fan v. Royal Sovereign
In what other states would there be
personal jurisdiction over Beverly Hills? Any state where there were fan sales of any magnitude
of any goods of the accused infringer 3% of the
infringers total sales in this case With any nationally distributed product, there is virtually
national personal jurisdiction
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
30/48
30
Genetic Implant v. Core-Vent
Jurisdiction for declaratory relief
Appointing a distributor combined withcease and desist letters is purposefulavailment of the forum states facilities
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
31/48
AGENDADeclaratory judgment actions
Prefiling Investigation (Rule 11)
Subject matter jurisdiction
Personal jurisdiction
Venue
31
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
32/48
32
Where Can Defendant be Sued?
28 U.S.C. 1400: venue exists:
Where defendant resides
Or, where defendant committed acts of
infringement andhas a regular andestablished place of business
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
33/48
33
Shopping for a forum where should
you file?
Hometown?
Hometown bias
Convenient
Rocket Docket?
Fast and plaintiff friendly
Will the case stick?
The other sides hometown?
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
34/48
Experienced Judges, educated jurypool?
ITC? Will the other party trump your suit in a
faster forum?
Shopping for a forum where should
you file?
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
35/48
35
District to District Comparisons*Chart 8 page 99
Transfer rates: NDCA 2.1%
EDTX 8.9%
Disposition by motion:
NDCA 9.0%, EDTX 1.9%
Disposition by trial: NDCA 2.1%
EDTX 5.1%
Chart 9 page 100 Patentee win rates range from 47% (DMA) to 83%
(DNJ)
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
36/48
36
Friendly Juries*
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
37/48
37
Why EDTX
People flock to the EDTX - and especially to Judges Ward andDavis - precisely because they know that the judges will let thecases linger and will generally sit on summary judgment motionsand if they do grant them, will wait until the end of the entire
case, thereby increasing settlement pressure.
Patent Troll Blog
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
38/48
38
Patent Filings/Judge*
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
39/48
39
Patent Trolls?As seen by the Trolls As seen by industry
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
40/48
40
Patent Trolls?
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
41/48
41
Problems Page 127ON-LINE - Delaware corporation doing business only in
Massachusetts
MICRONET California ISP selling all over the worldthrough an interactive web site
ON-LINE sent a cease and desist letter re 111 patent
Negotiations failed, ON-LINE set a January 1, 2007 datefor suit
Today is January 16
Litigation options?
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
42/48
42
Problems Page 127Where can ON-LINE file suit?
CA, WA, NY
What about MA? Has MICRONET sold goods over the internet to MA
residents?
Mere offer is not enough
Where can MICRONET sue for declaratory relief? MA, DE
What about California?
ON-LINE store in CA closed two years ago?
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
43/48
43
What Can A Defendant Do?
Is there personal
jurisdiction?Forum Non
Conveniens (28
USC 1404)? Discretionary
Multiple factors
Not appealable
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
44/48
44
In Re TS Tech USA Corp Is mandamus available?
Available in extraordinary circumstances to correct aclear abuse of discretion or usurpation of judicial powerwhere no other means of obtaining the relief desired
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
45/48
Forum Non Conveniens (28 USC 1404)?
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
In Re TS Tech USA Corp
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
46/48
46
Since TS Tech In re Genentech, 556 F.3d 1338 (Fed.Cir.
2009 In re Hoffmann-La Roche, 587 F.3d 1333
(Fed. Cir. 2009)
In re Nintendo, 589 F.3d 1199 (Fed. Cir.2009)
In reLink_A_Media, 662 F.3d 1221 (Fed.Cir. 2011) (applying 3rd Circuit law)Media,662 F.3d 1221 (Fed. Cir. 2011) (Applying
Third
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
47/48
47
America Invents Act of 2011
Venue left unchanged Original bill had venue provision similar to TS Techrule,
but provision was dropped because Federal Circuitviewed as doing a good job in forcing the Eastern Districtof Texas to transfer cases out
Change in joinder law 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
7/29/2019 2013 01 16 GGULS PAT LIT - Venue and Parties (Class 2)
48/48
But the Trolls Strike BackCommon tactic today is to file dozens of
single defendant suits, and seekconsolidation for pretrial purposes underRule 42(a)
If suits must be filed in different districtsfor venue purposes seek centralizationunder 28 U.S.C. 1407o Blue Spike filed 60 suits in 12 different districts B
Recommended