Ideas

Intellectual Property Report: April 2018

Firm Thought Leadership

In Re Silver: The Lone Star State Gives Patent Agents a Badge of Privilege
Mark Johnson

On February 23, 2018 the Supreme Court of Texas concluded that the definition of a “lawyer” – for purposes of the lawyer-client privilege under the Texas Rules of Evidence – is sufficiently broad to encompass some communications between a patent agent and their client. The impact of this decision may reach beyond the Lone Star State, particularly since Texas’s Rule 503 is modeled after a version of proposed Federal Rule of Evidence 503. While most other states’ courts have not addressed whether such communications are privileged, many states have adopted rules similar to Texas’s Rule 503 and thus may also reach a similar conclusion. Because many patent agents do not work under the supervision of an attorney, this development may significantly impact the privilege protection available when using such agents for patent prosecution.

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TC Heartland Update: Determining Venue in Multidistrict States
Bryan Parrish

Nearly a year has passed since the Supreme Court’s TC Heartland decision, which reaffirmed that 28 U.S.C. § 1400(b) “is the sole and exclusive provision controlling venue in patent infringement actions.” Under TC Heartland, a plaintiff may bring a patent infringement suit in “the judicial district” either: (1) “where the defendant resides,” or (2) “where the defendant has committed acts of infringement and has a regular and established place of business.” As to the former, corporations are typically understood to “reside” in the state of their incorporation. However, when a defendant is incorporated in a multidistrict state, a question arises whether venue is proper in any judicial district within a multidistrict state, or whether venue is only proper within the judicial district where the defendant has its principal place of business. This issue is now coming to a head as courts from the Central District of California and the Eastern District of Texas have issued competing interpretations of § 1400(b), and the defendant in the latter case has sought mandamus from the Federal Circuit.

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Not Fair (Use): Federal Circuit Reverses Jury Finding in Oracle v. Google Copyright Litigation
Paul Reilly & Julie Beth Albert

On March 27, 2018, the Federal Circuit issued an opinion in Oracle America, Inc. v. Google LLC, No. 2017-1118, 2017-1202, granting Oracle’s appeal of the district court’s final judgment against Oracle and denial of Oracle’s motions for judgment as a matter of law (JMOL). The Federal Circuit found that, despite a jury verdict to the contrary, Google’s use of Oracle’s copyrightable Java API packages “was not fair as a matter of law,” Slip Op. at 7, and remanded the case to the district court for a trial on damages (previously alleged at nearly $9 billion).

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