Thought Leadership

Intellectual Property Report: March 2019

Client Updates

Breaking the Bank and Deciding When to Fold: Personal Jurisdiction Over Declaratory Judgment Actions

Louis Liao

Towards the end of 2018, the U.S. Court of Appeals for the Federal Circuit issued two precedential opinions addressing the degree to which patent owners may control the forum where a declaratory judgment action is litigated. In both cases, a lower court dismissed a declaratory judgment action brought by an alleged infringer for lack of personal jurisdiction. Affirming the Eastern District of Tennessee in Maxchief Investments Limited v. Wok & Pan, Ind. Inc., the Federal Circuit held that a patentee did not create sufficient minimum contacts with Tennessee by (1) seeking, in California court, an injunction broad enough to have conceivable effects on a Tennessee resident and (2) mailing infringement notice letters to the alleged infringer’s lawyer in Tennessee.

Roughly a week later in Jack Henry & Assocs., Inc. v. Plano Encryption Techs. LLC, a separate panel of judges reversed the Northern District of Texas, holding that sending infringement notice letters to multiple banks in that district comprised the minimum contacts needed to subject a patentee to personal jurisdiction for purposes of venue. Taken together, the cases reveal that personal jurisdiction may pose a substantial, but not insurmountable, barrier to parties seeking a declaratory judgment in their forum of choice.

To read more,click here. 

Avoiding the On-Sale Bar: Invention Not ‘Ready for Patenting'

Frances Mackay

The Supreme Court’s recent decision, Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229, 586 U.S. ¬___ (2019), underscores the importance of filing for patent protection early. In Helsinn, the Supreme Court confirmed that under both the Leahy-Smith America Invents Act (AIA) and pre-AIA law, a prior sale of an invention may bar the inventor from receiving later patent protection if the inventor does not apply for this protection within one year of the sale, even if the sale does not actually disclose any of the inventive elements to the public. However, not all sales will start the one-year clock. The invention must be “ready for patenting” at the time of the sale and not in a stage of “experimental use.” Polara Eng’g Inc. v. Campbell Co., 894 F.3d 1339, 1348 (Fed. Cir. 2018).

Accordingly, two days after the Helsinn decision, the Federal Circuit held in Barry v. Medtronic, Inc., No. 914 F.3d 1310 (Fed. Cir. 2019) that three surgeries using a method to correct spinal column anomalies did not invalidate a patent on the method, even though the surgeries were performed by the inventor/doctor for his standard fee outside the one-year grace period, because at the time of the surgeries the method was still in the experimental stage and thus not ready for patenting.

To read more, click here. 

Baker Botts Webinar Series Part 1: Blockchain: Beyond the Financial Services Sector

On Wednesday February 27th Baker Botts lawyers Sandra Lee, Ali Dhanani and Jamie R. Lynn held a webinar covering how blockchain technology works and how applications, like cryptocurrency, may affect existing business models and competitive markets, and how blockchain technologies can become an asset to a company's portfolio. To receive an invitation for Part two and three of this webinar series, please contact Sara Baltazar.

To view a recording of the webinar, please click here. Marks the Spot: Considerations for Marking Digital Products

Jennifer Robichaux Carter

To preserve the ability to collect pre-suit damages, patent owners should consider marking the user interface of their patented software applications in compliance with the marking statute, 35 U.S.C. § 287(a). However, too conspicuous of a mark causes clutter, compromising overall aesthetics and user experience. This article discusses approaches for striking the right balance between these two considerations when marking the user interface of an app. First, the article discusses virtual marking as a tool for reducing interface clutter. Next, we discuss the current state of the law regarding software marking. Finally, this article considers a few marking locations and balances the benefits and risks of each location in terms of user experience against likelihood of compliance with the marking statute.

To read more, click here.


Brexit: What Happens to Your Registered and Unregistered Community Designs?

Neil Coulson, Zarah Rasool

The politicians are still talking, but exit day on March 29 gets ever closer and there is still no deal on the UK’s withdrawal from the European Union. Last month we looked at how EU trade marks would be treated if the UK adopted the current Withdrawal Bill or left with no deal. This month we turn our attention to designs, looking at both registered Community designs (RCDs) and unregistered Community designs.

To read the full article, click here.