Posts Tagged: "Guest Contributor"

Federal Circuit Further Defines the Scope of Patent Venue

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. 

NFTs and IP Law: An Overview for Buyers and Sellers

Blockchain technology has brought the world a collection of cutting-edge investment opportunities, non-fungible tokens (NFTs) among them. And with the advent of these unique digital assets, comes an entirely novel product segment subject to intellectual property law. For months now, the media has covered stories about NFTs selling for obscene prices. But behind these headlines—and given the onslaught of NFTs that continue to flood the market—are questions regarding trademark and copyright issues raised by these non-interchangeable units of data.

Conservatives Urge HHS to Deny Turning Bayh-Dole March-In Provision into Price Controls

Thirty-one signatories from 29 center-right public policy organizations have written U.S. Health and Human Services Secretary Xavier Becerra, urging him to deny a petition from Knowledge Ecology International that requests use of march-in rights under the Bayh-Dole Act against the prostate cancer medicine, Xtandi. The conservative organizations represented on the letter include some of the most prominent center-right groups, such as the American Conservative Union, Americans for Prosperity, Americans for Tax Reform, the Competitive Enterprise Institute, Eagle Forum Education & Legal Defense Fund, FreedomWorks Foundation and Heritage Action for America. Conservatives for Property Rights led the letter initiative.

Patent Filings Roundup: Realtor Files IP Edge Declaratory Judgment in Hawaii After Demand Letter; Dog Collar IPR Instituted Over Lengthy Fintiv Arguments; IP Edge Files Another 25+

It was a banner district court week, with 104 patent filings and 64 cases terminated, mostly file-and-settle non-practicing entity (NPE) litigation, and 26 Patent Trial and Appeal Board (PTAB) cases, including Nokia challenging NPE TQ Delta, LLC; Dexcom, Inc. filing against Abbot Diabetes Care Inc.; and Samsung filing against the Fortress IP-funded Netlist, Inc. In a week where IP Edge filed almost 30 new district court cases, one letter recipient filed a declaratory judgment (DJ) action…. This isn’t the first time this year a party has DJ’d IP Edge (a relative rarity given how small the sums involved are), suggesting either that smaller companies are getting fed up or that their campaigns have been broadly applied.

Forum Selection Clauses May Bar an IPR

Almost anyone can, by statute, request an inter partes review (IPR) of an issued patent, but may limit their right to do so contractually, such as through licensing agreements or non-disclosure agreements (NDAs). These agreements may contain clauses that limit the forum in which any dispute between the parties can be litigated. The Patent Trial and Appeal Board (PTAB) itself has consistently declined to enforce such forum selection clauses, finding that it lacks authority to enforce contracts between the parties, and, in any case, its jurisdiction is statutory and not limited by private agreements between the parties. However, in Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., the U.S. Court of Appeals for the Federal Circuit recently held that a petitioner was barred from bringing an IPR as a result of a contractual agreement with the patent owner.