Patent Litigation Strategies Handbook

Gary M. Hoffman

<p>The 2018 Cumulative Supplement adds new discussions including the following: Discussions of case law in federal courts applying TC Heartland to motions alleging improper venue, defining the scope of acts of infringement and a regular and established place of business ; in In re BigCommerce, Inc., the Federal Circuit clarified that venue is proper in only one particular judicial district in the state ; and in In re Cray Inc. the Federal Circuit identified three general requirements for a party to have a regular and established place of business in a judicial district Supreme Court rulings on the PTAB in Oil States Energy Services, LLC v. Greene s Energy Group, LLC, holding that IPR proceedings do not violate Article III of the U.S. Constitution, and in SAS Institute, Inc. v. Iancu rejecting the PTAB s partial institution practice A new section explaining the latest in arbitration in PTAB proceedings At the intersection of antitrust and patent law and following Actavis, the Third Circuit concluded that the federal district court improperly exercised federal jurisdiction based solely on a counterclaim that turns on federal law in In re Lipitor Antitrust Litig. On remand in Amgen Inc. v Sandoz Inc., the Federal Circuit held that BPCIA preempted state law claims under both field and conflict preemption Providing some much-needed guidance, the Federal Circuit in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Int l Ltd. held that claims were patent eligible because they are directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome, in contrast to the claims in Mayo, which were directed to the natural relationship itself, and USPTO issued guidance adopting the Federal Circuit s Vanda opinion In Amgen v. Sanofi/Regeneron, the Federal Circuit rejected the so-called newly characterized antigen test, because permitting patentees to claim antibodies by describing something that is not the invention (the antigen) would effectively dispense with the requirement that a patentee provide a written description of the invention ; in view of Amgen, the USPTO issued guidance in February 2018 stating that adequate written description of a newly characterized antigen alone should not be considered adequate written description of a claimed antibody to that newly characterized antigen, even when the preparation of such an antibody is routine and conventional In Krausz Indus. Ltd. v. Smith-Blair, Inc., the Eastern District of North Carolina extended waiver of attorney client privilege and work product to post-litigation communications and work product in light of an allegation of ongoing willful infringement under the theory that neither Halo nor In re Seagate precluded an extended waiver New sections in the chapter on document discovery on local patent rule discovery requirements and on potential e-discovery issues created by the new EU GDPR law In a state court action involving an allegation of breach of contract in In re Andrew Silver, the Texas Supreme Court recognized that a party was entitled to claim privilege over emails to his patent agent In Regeneron Pharms., Inc. v. Merus N.V., the Federal Circuit held that the district court did not abuse its discretion when it sanctioned Regeneron by drawing an adverse inference for widespread discovery misconduct throughout the litigation Two Federal Circuit opinions issued on the same day addressed attorney s fees in exceptional cases Checkpoint Sys. v. All-Tag Sec. S.A. reversing the lower court s grant of attorney s fees, and Rothschild Connected Devices Innovations, LLC v. Guardian Prot. Servs. reversing and remanding the lower court s denial of attorney s fees, and more</p>

Patent Litigation Strategies Handbook, Fourth Edition, 2018 Cumulative Supplement

Editor-in-Chief

ABA Section of Intellectual Property Law

William P. Atkins

Deborah E. Fishman

Reference

Bloomberg Law

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Books by Gary M. Hoffman