Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent decision out of the Northern District of California in a patent case, the district judge adopted a Special Master’s $5.9 million fee award, and also denied a motion for sanctions in which the prevailing defendant sought to recover expert fees and other costs not otherwise available under 35 U.S.C. 285. What may be most notable in this opinion is that the Court called out specific lawyers for conduct that “was improper and frustrated the fairness of the proceedings.” About its denial of the sanctions noted, the Court that, “In no way does this order vindicate attorneys [names].” The takeaway here is that zealous advocacy only goes so far. Changing important theories late in cases or asserting baseless claims will likely get one in trouble.

2. In what amounted to a rough day at the Federal Circuit Court of Appeals for Personal Web Technologies, the Federal Circuit affirmed the invalidation under Section 101/Alice of several claims in three different patents directed to data identification processes, and affirmed the non-infringement of one of the same patents from the patent family and another patent based on upholding the district court’s construction of claim language indicating that use of the term “or” in a patent claim to connect synonymous terms was permissible. The takeaway of interest here may be the ability to use “or” in patent claims, which is generally frowned upon by patent prosecutors, to connect synonymous claim terms under the right circumstances.

3. In review of a venue decision from Judge Mazzant of the Eastern District of Texas, the Federal Circuit affirmed a dismissal for improper venue as to certain parent/related Victoria’s Secret entities where other than the physical presence in the district of the stores themselves, these other entities were not incorporated in Texas, did not have a physical location in Texas, nor any established place of business in Texas. The wrinkle here was that the plaintiff tried to argue that there was an agency relationship between the defendants that allowed all of them to be sued in East Texas based on the physical location of one of the defendants. This argument was rejected by the district court and affirmed by the Federal Circuit. The plaintiff also argued that the other defendants ratified the presence of the one store entity in Texas because of an alleged unified business model and/or alleged common corporate governance. The district court also rejected this argument and the Federal Circuit upheld it. The takeaway here is that creative arguments to hold venue in Texas are appreciated, but the evidence to support those arguments needs to be pretty specific in order for it to work. It was a nice try.