Weekly IP Takeaways

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

1. In related orders in response to writs of mandamus filed by Adobe and Dropbox in patent cases related to cloud storage, the Federal Circuit ordered Judge Alan Albright of the Western District of Texas to transfer the cases to the Northern District of California. See here and here. In the last few years the Western District of Texas has become the new hotspot for patent litigation See here, here, and here. The Federal Circuit said that Judge Albright did not give enough weight to the convenience of the transferee court (here, the Northern District of California), did not give enough weight to the cost of attendance at trial in Texas of willing witnesses, and gave too much weight to the speed to trial (which is something that Judge Albright touts in his court). As with its sister district in the Eastern District of Texas, it appears that push back is picking up as to whether venue is proper in the Western District of Texas, particular the Waco division thereof.

2. In a rare post grant review (PGR) proceeding, and an even rarer use of post-grant proceedings to challenge a design patent, the Patent Trial and Appeal Board (“PTAB”) instituted a post-grant review of a design patent directed to tabs on a video mount adapter bracket. The PGR was instituted because the design was primarily functional and not ornamental. The institution decision was designated as “informative” by the PTAB. While challenges to design patents under the post-grant review procedures under the America Invents Act are relatively rare, this is one instance in which the relative lack of ornamentation on a design was grounds for institution of a PGR.

3. In a very interesting decision in an ex parte appeal of a rejection of a patent application, the PTAB determined that a prior art reference shown to have been archived by the Internet Wayback Machine prior to the effective filing date of a patent application was accessible and thus available to serve as prior art. The use of the Internet Wayback Machine is gaining steam in litigation. Here, the PTAB has indicated that if an document in the Wayback Machine was archived prior to the effective filing date of a patent application, it can serve as prior art to the application. This may have implications for prior art searches in a litigation context, as well as potentially expanding the scope of prior art searches by patent examiners.