Dustin Ferzacca is an associate in Troutman Pepper’s Intellectual Property group. He earned his Juris Doctor from University of New Hampshire Franklin Pierce School of Law, where he served as Managing Editor of IDEA: The Law Review of the Franklin Pierce Center for Intellectual Property. While in law school, Dustin worked as Intellectual Property Co-op for a global automotive technology company, where he executed patent prosecution and new application drafting for both United States and international patents. Dustin also served as a Judicial Extern for the New Hampshire Supreme Court. Dustin earned his Bachelor of Science in Mechanical Engineering from Carnegie Mellon University.
Patent owners facing inter partes review (IPR) challenges have the option of filing a motion to amend as a contingency plan. This motion, accompanied by proposed substitute claims, allows the patent owner a fallback position if the Patent Trial and Appeal Board (PTAB) finds the original claims unpatentable. If successful, despite the unpatentability of the original claims, the patent owner maintains the substitute claims. While this sounds great in concept, the historical success rate of such motions is low. From October 2012 through March 2020, only 14% of motions to amend were granted. This improved slightly in 2020, to 25%, but dropped back to 18% in 2021 (calculated using data from Docket Navigator). The recent decision in Hunting Titan, Inc., v. DynaEnergetics Europe GmbH thus presents the somewhat rare case in which an amendment was granted by the PTAB and affirmed on appeal. That said, the Federal Circuit’s narrow holding does not indicate an easier future for patent owners’ motions to amend; indeed, the opposite may be true.
Recently, in In Re: Volkswagen Group of America, Inc., the United States Court of Appeals for the Federal Circuit (CAFC) further defined the level of control a defendant must exercise over an in-district agent to establish patent venue – i.e., where a case can be filed. The Federal Circuit held that the requisite control a principal must establish over its alleged agent in order to establish venue is “interim control”: day-to-day control over the manner of carrying out the specific actions for which the alleged agency relationship exists. Accordingly, in reversing the lower court, the Federal Circuit held that the dealerships in question were not agents of Hyundai or Volkswagen for the purposes of selling cars to consumers and providing warranty services.
The core business model of energy producers and providers does not traditionally create significant patent litigation risk. Despite the complexity of the modern energy grid, the basic business and technology of energy generation has not changed significantly in the past 100 years. However, new programs, including residential demand response, executed via smart home appliances and controls, may expose utility companies to increased liability. Demand response programs allow utility providers to reduce grid load and energy pricing by offering customers pricing incentives to reduce energy usage during times of peak demand…. While such programs have been generally available for commercial customers, recently, demand response opportunities for residential customers have been expanding. Where these residential demand response programs allow energy providers to directly control, through the internet, consumers’ smart thermostats and appliances, energy providers may be exposed to patent liability.