Intellectual Property Report: October 2017

Firm Thought Leadership

Physical Place of Business Required for Patent Venue Under In re: Cray
Elise Edlin
The patent venue statute provides two tests to determine whether a particular district is the correct venue to bring an infringement action. First, it is proper in the “judicial district where the defendant resides,” and second, it is proper “where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b). Following the Court’s decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1517 (2017), venue disputes have increasingly centered on the question of whether the defendant “has a regular and established place of business” in the district. 28 U.S.C. § 1400(b). But district courts have been interpreting this requirement inconsistently: while some courts held that physical presence in the district is not required, others determined that it is. The Federal Circuit recently resolved this issue holding that the correct test is “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.” In re: Cray, Inc., No. 2017-129, slip op. at 6 (Fed. Cir. Sept. 21, 2017). The venue tests resulting from TC Heartland and In re Cray will make it difficult for plaintiffs to maintain infringement suits in districts where the defendant only has a few remote employees, and for large companies with minor physical presence in multiple districts, the venue debate will shift to the convenience factors considered under § 1404(a).

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Blockchain[ging] How Things Are Done
Peter Menchini, Ali Dhanani
Blockchain technology has earned its place as a headline topic in the technological sector, in part due to its potential to disrupt and transform a vast range of industries. As an efficient and reliable way to store and exchange data, the use of a blockchain can reform industries that rely on the accessibility of certain data, such as, in the intellectual property space, IP chain of title or ownership. And because a blockchain can be used to represent and transfer assets in a digital form, companies have already began envisioning new models for the execution of IP licensing agreements and the payment of royalties for consumed creative content.

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Split Decisions Bring Variety of Opinions From the Federal Circuit*
Robert C. Scheinfeld
Many patent attorneys, having backgrounds in the hard sciences, can appreciate repeatable tests and bright-line rules. Patent law, however, is rarely clean. The Court of Appeals for the Federal Circuit (CAFC) has illustrated this with a number of split decisions issued over the past few months. The opinions have covered a wide range of patent law—for example, patentable subject matter, obviousness, and damages—and have demonstrated disagreement on the court about how to apply certain tests and even how to interpret the CAFC's own decisions. This article reports on three recent split decisions, and reviews the competing opinions of the judges.

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*This article first appeared in New York Law Journal, September 25, 2017.

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