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NPEs & Forum Shopping: The Supreme Court hears In re TC Heartland

This Blog Was Published Prior To The Supreme Court’s Decision. It Highlighted Errors in The Federal Circuit Precedent and Accurately Predicted The Supreme Court’s Final Decision.

Executive Summary: During the March 2017 session, the Supreme Court heard oral arguments concerning the Federal Circuit’s decision in In re TC Heartland. In that case, the Federal Circuit affirmed its own twenty-five year old precedent that has enabled non-practicing entities (“NPEs”) to readily litigate in patent friendly jurisdictions, such as the Eastern District of Texas and the District of Delaware. Continue reading “NPEs & Forum Shopping: The Supreme Court hears In re TC Heartland”

Cost Shifting: Amendments to Rule 26(b)

Executive Summary: The rule that defines the scope of discovery was amended on December 1, 2015.  The scope of discovery still turns broadly on relevance.  However, the amended provision now requires that requested discovery be “proportional to the needs of the case.”  This can be especially helpful in curbing discovery abuse in NPE cases.  One expressly enumerated factor for assessing proportionality is Continue reading “Cost Shifting: Amendments to Rule 26(b)”

Halo: Changes Regarding Enhanced Damages

Executive Summary: The Patent Act authorizes the district court to enhance the damages award by up to three times when patent infringement is found to be willful. The Supreme Court’s decision in Halo lowered the legal threshold for willfulness thereby making it easier for patent owners to obtain an award for enhanced damages. To avoid an award of enhanced damages due to willful infringement, accused infringers should now give greater consideration to obtaining a non-infringement and/or invalidity decision relatively soon after Continue reading “Halo: Changes Regarding Enhanced Damages”

Recent Developments in Alice: Enfish & TLI

Executive Summary: In its Alice decision, the Supreme Court provided little guidance for practitioners to  make patentability assessments.  Comparison of two recent Federal Circuit decisions is helpful.  The patents in Enfish and TLI had similar technological subject matter, but the Federal Circuit came to different conclusions regarding patentability.  The Federal Circuit noted that the ill-fated TLI patent lacks detail and the disclosure describes several claim elements as “well known.”  The claims also recite functional terms.  In contrast, the patents in Enfish passed scrutiny under Alice.  In the words of Iain Banks, “You have to have something worth saying and then the ability to say it.” Continue reading “Recent Developments in Alice: Enfish & TLI”