◊ VRP Law-The Intellectual Property and Employment Law Blog.
Provided by Vihar R. Patel and Sponsored by Enterprise Law Group, LLPArchive for Patent Law Publications
Displaying Products at Trade Shows-Basis for Personal Jurisdiction!
Imagine you are a foreign company selling a product in Brazil. Your company does not sell or distribute products in the United States (“US”). You learn of a trade show or convention relating to your products. It’s an international trade show or convention located at a site in the US. You decide to send a company representative to the US with a demo of your product.
Little did you know that now, you will be subjecting yourself to a lawsuit in the US. This is very close to the facts that led the Federal Circuit to find personal jurisdiction for Synthes (U.S.A) to sue GMReis. GMReis’ CEO and an employee attended international trade show of the American Association of Orthopedic Surgeons (AAOS) in San Diego and displayed five interlocking bone plates at a booth. At the trade show, GMReis was served with a complaint for patent infringement.
Synthes an assignee of a US patent directed at “a bone plating system and method for fracture fixation of bone” sued GMReis, a Brazilian company for patent infringement in the US. The Federal Circuit held that under FRCP 4 (k) (2), although the court did not have general jurisdiction over GMReis, there was sufficient contact for specific jurisdiction relating to patent infringement.
The court’s holding was based on the following activities by GMReis: 1) attending seven (7) trade shows in the US demonstrating its products; 2) selling one (1) product to a veterinary company in the US; 3) purchasing parts and a manufacturing machine for use in Brazil; 4) meeting with two American companies regarding purchase and development of non accused products; and 5) two inquiries by US entities regarding FDA approval of its interlocking bone plating products and potential clinical trials.
The Federal Circuit’s analysis of minimum contacts and whether or not it would be reasonable and fair to sue a foreign company in the US; opens the door to patent infringement claims against foreign entities. Only, time will tell how far this door will open, but it’s another tool for a patent holder to protect its interest.
Proposed Local Rules for Patent Cases in the Northern District Court of Illinois!
On March 19, 2009 the full court met and approved local rules for patent infringement cases for the Northern District Court of Illinois. These local rules are designed to stream line the patent litigation process to help reduce costs, fees and the time it takes to get to a jury trial.
Currently, the average time to get to a jury trial is about 4.7 years. However, the proposed local rules hope to cut this time down to about 2 years. The local rules require an Answer to a Complaint within 7 weeks and build in a one time extension of 28 days to Answer or otherwise plead. The local rules require initial disclosures similar to 26.1 (a) (1), but are particularized for patent litigation.
The rules set a deadline to get to final contentions regarding infringement, non-infringement, and invalidity. In addition, the rules provide a schedule for claim construction or markman briefs and hearing. After the court’s claim construction or markman ruling, the rules permit an additional 42 days to conduct fact discovery.
Upon completion of fact discovery the rules set deadlines for expert discovery, dispositive motions and the trial is supposed to take place within 23 months from the date the Complaint was filed. (See rules below for specific deadlines or time periods). The proposed rules were a collaborative effort by the local bar and judges to make the practice of patent litigation more efficient.
Through the hard work of many lawyers and judges these rules do not seem to favor either Plaintiffs or Defendants. This is not the rocket docket, but a balancing of interests to provide an efficient litigation process. However, it remains to be seen how the local rules will be adopted or modified for counter-claim or third party practice.
Attached is a copy of the local rules for patent infringement claims in the Northern District of Illinois for your consideration: Proposed Local Rules for Patent Cases
Quarterly Newsletter: September 2008
This is the first of our quarterly newsletters. This newsletter is designed to provide updates on business, employment and intellectual property law. It also includes various tips to help manage business and legal risks, as well as, ways to grow your business. We hope that you find it useful in your business, life and practice.
Should you have any questions or concerns, please contact our office.
Pattern Jury Instructions for Patent Infringement are here!!
The Seventh Circuit’s proposed jury instructions are finally available for comments. These new proposed jury instructions are a great source of law, as well as discussions relating to common issues and points of contention such as: willfulness, obviousness standard, person of ordinary skill in the art, equilvalence, indirect or inducing infringement theories and of course damages.
For your consideration, I have attached a set of the proposed jury instruction. If you have any comments, feel free to post them on the blog or forward them on to Chief Judge Robert L. Miller Jr. at robert_miller@innd.uscourts.gov or mail it to 325 Robert A. Grant Federal Building, 204 S. Main St. South Bend, IN 46601.
How do I stop the importation of counterfeit or infringing goods?
A major issue in our increasingly global economy is the importation of counterfeit or infringing goods. Often foreign countries do not recognize the same form of Intellectual Property rights as the US. Often cited complaints are the creation of infringing goods in foreign countries and importation of these goods into the US. This is a hot issue in countries with weak Intellectual Property rights, which makes it easier for the production and exportation of counterfeit or infringing marks.
However, section 337 complaints, exclusion orders, the International Trade Commission (ITC) and the US Customs office enable intellectual property owners to protect their rights. The ITC is a front line agency involved in preventing the importation of counterfeit or infringing goods. Below is a simple summary of the ITC’s process and how it can aid Intellectual Property Owners.
Using the ITC to police and prevent the importation of Counterfeit and Infringing goods.
Understanding Patent Claim Construction
Patent Claim Construction is the process by which a patent owner’s invention is defined. The claims are the boundary and scope of the patent owner’s right to exclude others from practicing the invention. Patent claim construction is at the heart of most infringement, non-infringement, design around, willfulness, equivalvence, and invalidity analysis.
Courts interpret the language in a patent claim based on a variety of what are called claim construction principles. Many of these are similar or analogous to statutory construction principles. Courts typically interpret the claims in the context of what is called a Markman hearing. Since the main focus of most patent litigation is claim construction, here is a copy of the Federal Circuit’s decisions on claim construction published by the IPLAC litigation committee.
Enjoy and thanks!
A Review of the Federal Circuit’s Claim Construction Cases for 2005
Biotech Patents and Applying the FDA Exemption to Research Tools
This publication provides a detailed analysis of the biotech industry, patent law, the need to protect the incentive to produce new inventions without stifiling competition or the development of follow through inventions and the concerns of the owners of biotech research tool owners.
It is a detailed analysis of the industry, policies, players, and proposes a modification to the FDA Exemption from patent infringement to permit courts to appropriately balance the interests involved. The paper covers a variety of topics and principles relating to patent law, biology, Food and Drug Administrtion Regulations, the pharmaceutical industry, competition and antitrust theory, litigation and business strategy.
Thanks and Enjoy!
A proposed modification to the FDA Exemption from Patent Infringement.
