The New Battlefield: Regular and Established Place of Business

By: Gilbert Smolenski *| Guest Writer

Under the patent venue statute, 28 U.S.C. § 1400(b), venue is proper: (1) where a defendant resides or (2) where a defendant has committed an act of infringement and has a regular and established place of business. From 1990 until May 22, 2017, “resides” was interpreted by the Federal Circuit to take on the same meaning as “resides” in § 1391(c). Therefore, so long as the court had personal jurisdiction over the defendant, venue was proper. On May 22, 2017, however, the United States Supreme Court reversed the Federal Circuit in TC Heartland v. Kraft Food Group Brands, holding that “resides” refers only to the state of incorporation for domestic corporations. This reasserted the Supreme Court’s earlier interpretation of “resides” from Fourco Glass Co. v. Transmirre Products Corp., and consequently opened the door to a new battlefield for patent litigation, specifically the meaning of “regular and established place of business.”

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Rock Band Disrupts Intellectual Property Law

By: Andrew Homer *| Guest Writer

By This image or media was taken or created by Matt H. Wade. To see his entire portfolio, click here. @thatmattwade     This image is protected by copyright! If you would like to use it, please read this first. (Own work) [CC BY-SA 3.0 (], via Wikimedia Commons

By This image or media was taken or created by Matt H. Wade. To see his entire portfolio, click here. @thatmattwade This image is protected by copyright! If you would like to use it, please read this first. (Own work) [CC BY-SA 3.0 (], via Wikimedia Commons

The Supreme Court recently ruled that the United States Patent and Trademark Office (USPTO) cannot deny the registration of a trademark because some may find the mark disparaging or offensive. The case that led to the ruling, Matal v. Tam, upended a 70-year-old tradition of federal trademark law found in 15 U.S.C. §1052 (a) and commonly named the disparagement clause. The Court holding that the disparagement clause is unconstitutional will have broad reaching effects to other aspects of intellectual property law and the nature of the corporation.

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Lexmark: A Closer Look at the Patent Exhaustion Doctrine when Articles are Sold Outside the U.S.

By: Katherine Escalante*| Staff Writer March 21, 2017, the Supreme Court heard oral arguments in Lexmark International, Inc. v. Impression Products, Inc. relating to the doctrine of patent exhaustion. While the opinion is not yet available, the Supreme Court’s decision is expected to become a pivotal decision on the application of the patent exhaustion doctrine. The Supreme Court will review the Federal Circuit’s en banc decision finding: “(1) the first sale doctrine does not apply to patented articles sold subject to restrictions . . .; and (2) the first sale doctrine does not apply to patented articles sold outside of the United States.”

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The Potential End to Chevron Deference – An Avenue for Changing the USPTO’s Broadest Claim Interpretation Standard

By: Katherine Escalante*| Staff Writer

*Data current as of: 5/31/2016

Many questions are looming with the recent passing of the bill in the United States House of Representatives (“House”) aimed at ending agencies’ judicial deference in promulgating rules.  The Regulatory Accountability Act was passed by the House on January 11, 2017.  If passed by the Senate, the bill would legislatively repeal the Chevron deference doctrine that gives deference to federal agencies interpretations when evaluating federal rules and regulations.  A principle that has been the foundation of judicial review of statutory interpretation by administrative proceedings since 1984.  The name comes from a Supreme Court case, Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., in which the Court held that deference would be given to agency interpretations, unless the interpretation was found unreasonable.  Continue reading »

Finders Keepers: Not The Case In Design Patent Suits

By: Hunt Harris*| Staff Writer,0.5,0,0&iccEmbed=0&layer=comp&.v=RZ0lL2

Back in December of 2015, Samsung agreed to pay Apple $548 million in damages stemming from a 2011 lawsuit filed by Apple.  In the lawsuit, Apple argued that Samsung infringed on three design patents that represent the essence of the iPhone.  Design patents are meant to protect items whose design is central to the product.  As part of the deal, Samsung and Apple agreed to withdraw all patent lawsuits outside of the United States. Samsung also reserved the right to reclaim the funds if the verdict is subsequently overturned.  In March of this year, the Supreme Court agreed to hear an appeal from Samsung over the appropriate amount of damages to be paid to Apple. Continue reading »

‘Never Say Never’: Bieber and Usher Dragged Back into Copyright Battle

By: Valerie Mock* | Summer Guest Writer

In April of 2010, Justin Bieber released “Somebody to Love,” an upbeat urban pop song that peaked at number 15 on the Billboard Hot 100 and earned a Platinum certification from the Recording Industry Association of America (RIAA).  The track received positive critical reception from industry standards like Rolling Stone, and was so popular that Bieber eventually re-recorded the song with his superstar mentor, Usher, for distribution both as a remix and as part of Usher’s 2010 EP “Versus.”

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Author=[ Loren Wohl] |Date=2010-12-13 |Permission= |other_versions= }}

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Another Battle in the Patent War of Apple and Samsung

By: Tyler S. Hood* | Staff Writer

On September 17, the federal circuit decided Apple, Inc. v. Samsung Electronics Co., Ltd., the latest patent case decision in a protracted series of smartphone patent infringement battles between the two electronics giants.  The case concerned Samsung’s alleged infringement on a few Apple smartphone patents, perhaps most notably the patent for the swipe-to-unlock feature. The District Court had ruled that Samsung had infringed on the Apple patents in question, but the court denied to issue a permanent injunction on the grounds that Apple  failed to demonstrate that the infringement resulted in irreparable harm.

Transferred from Flickr by User:Fæ

Transferred from Flickr by User:Fæ

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The Evolving Standard of Antitrust Analysis in Pharmaceutical Product Hopping

By: John S. Sears* | Summer Guest Writer

Photo provided by

Is it “pharmaceutical innovation” or “product hopping”?  The distinction is not always clear.  While pharmaceutical innovation brings new and improved pharmaceuticals to patients, the term “product hopping” refers to a tactic by which brand name pharmaceutical companies try to obstruct generic competition by making modest reformulations that offer little or no therapeutic advantages.  Such approaches are contrary to section 2 of the Sherman Act that makes it an offense to “monopolize, or attempt to monopolize … any part of the trade or commerce among the several States.” Continue reading »

Patent Reform in the 114th Congress

By: John S. Sears* | Summer Guest Writer

1868 Typewriter Patent

1868 Typewriter Patent

Despite recent years having witnessed the most extensive overhaul of U.S. patent law since the U.S.  Patent Act of 1952, it is clear more reform of U.S. patent law is on the horizon.  I recently had the privilege of leading a panel discussion on patent reform legislation at a meeting of university technology transfer professionals. Some proposals in the 114th Congress could have significant impacts on university tech-transfer practice, but for now I want to give a more general summary of the bills making their way through Congress

There are three bills in the 114th Congress considered “comprehensive” patent reform legislations, including major revisions such as to how we handle post-grant review proceedings, pleading requirements, demand letter practice, discovery, and willful infringement.  These include the Innovation Act (HR.9) and the corresponding Protecting American Talent and Entrepreneurship (PATENT) Act of 2015 (S1137), and the Support Technology and Research for Our Nation’s Growth (STRONG) Patents Act of 2015 (S.632).

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Biggest Loser Host Hopes To Win Big In Court

By: Hunt Harris* | Summer Guest Writer

Jillian Michaels, the popular celebrity trainer and former host of “The Biggest Loser,” has filed a $10 million lawsuit against Lionsgate over YouTube videos posted to its channel.  Michaels, who recently quit the show for the third time in June 2014, claims Lionsgate has not compensated her for her workout videos that are used on the company’s YouTube channel.  The complaint states that “despite receiving millions of dollars in revenue from YouTube, and half of all views on the YouTube BeFit channel relate to Ms. Michaels’ Lionsgate (videos), Ms. Michaels has not received any compensation whatsoever.”  Lionsgate’s BeFit, which launched in 2012, has generated more than 200 million views to date and has more than 1.5 million subscribers on YouTube. According to Michaels, Lionsgate “did not consult her before they used her image and brand on the channel, and exceeded the number of videos posted to YouTube allowable under her contract.”

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