Patent Law

Patents and Antitrust, Worldwide - Podcast

Intellectual Property Law Practice Group Podcast
Maureen K. Ohlhausen, Alexander Okuliar August 17, 2017

The smartphone patent wars have caused a great deal of litigation and consternation. As global patent litigation has accelerated, an international arms race characterized by competing alliances and massive portfolio acquisitions ensued. One recurring claim was "hold-up": certain patent owners, having given assurances that they would license their essential technologies on reasonable and nondiscriminatory (RAND) terms, sought to enjoin smartphone makers from practicing industry standards. Charged with protecting consumers, antitrust enforcers experienced pressure to do something.

The FTC and other competition agencies responded aggressively, clamping down on perceived efforts by owners of RAND-encumbered SEPs to hold-up standard implementers. They happened upon the rule that such patentees violate antitrust law if they try to enjoin a “willing licensee”—essentially a “no-injunction rule.” While that approach has intuitive appeal, is it consistent with core antitrust principles? Does the no-injunction properly consider whether the relevant conduct harms competition?  Have the U.S. Federal Trade Commission's actions emboldened foreign competition agencies to act aggressively?  These and other questions were addressed.


  • Hon. Maureen K. Ohlhausen, Acting Chairman, Federal Trade Commission
  • Mr. Alex Okuliar, Partner, Orrick, Herrington & Sutcliffe LLP

Courthouse Steps: Impression Products, Inc. v. Lexmark International, Inc. - Podcast

Intellectual Property Practice Group Podcast
Adam Mossoff, Kristen Osenga, Steven M. Tepp June 14, 2017

The Supreme Court handed down one of its most significant decisions in patent law in recent years on May 30 in Impression Products v. Lexmark International. This case will have a monumental impact on the commercialization of patented innovation in both the U.S. and in global markets. The case arose from Lexmark’s imposing restrictions on the resale and reuse of its patented toner cartridges, and whether this was permissible or not as an exercise of Lexmark’s property rights in its patent. Lexmark sued Impression Products for patent infringement for violating its post-sale restrictions. In a unanimous opinion written by Chief Justice Roberts, the Court held that such post-sale restrictions are not within the scope of rights secured by a U.S. patent. This decision upends decades of licensing and sale practices in the U.S. innovation economy, and raises fundamental questions about the nature of the economic incentives that drive the patent system, as well as the nature of the property rights long secured in a patent under U.S. law. This Teleforum discussed Chief Justice Robert’s opinion in Impression Products, as well as its economic and legal implications for patent-owners and the innovation economy.


  • Prof. Adam Mossoff, Co-Founder, Director of Academic Programs & Senior Scholar, Center for the Protection of Intellectual Property; Professor, Antonin Scalia Law School, George Mason University
  • Mr. Steven Tepp, President & CEO of Sentinel Worldwide; Professorial Lecturer in Law, George Washington University Law School
  • Moderator: Prof. Kristen Osenga, Professor of Law, University of Richmond

Courthouse Steps Decision: TC Heartland LLC v. Kraft Foods Group Brands LLC - Podcast

Intellectual Property Practice Group Podcast
William J. Brown, J. Devlin Hartline May 26, 2017

On May 22, 2017, the Supreme Court handed down its unanimous opinion in the closely-watched TC Heartland LLC v. Kraft Foods Group Brands LLC case. The patent venue statute provides that a domestic corporation may be sued for patent infringement anywhere the defendant “resides,” and the question before the Court was whether that rule incorporates the broader definition of corporate residence found in the general venue statute. The district court and the Court of Appeals for the Federal Circuit both held that it did, thus giving patent owners more choices of where they could sue for infringement. However, the Supreme Court reversed, holding that a corporate defendant only “resides” in its state of incorporation.

While the Supreme Court rested its opinion solely on the statutory language and its own precedent interpreting it, many of the arguments raised in the amicus brief supporting both sides focused on the policy implications. In particular, the briefs argued that the Court should consider the effect its decision would have on certain patent assertion entities (PAEs) or “patent trolls”—non-practicing patent owners who litigate their patents, oftentimes in the Eastern District of Texas. Whether such arguments persuaded the Court is unclear, though it is clear that the Court’s narrow rule for where patent owners may sue will change the litigation landscape for practicing and non-practicing entities alike.


  • Mr. William J. Brown, Jr., Managing Partner, Brown Wegner LLP
  • Prof. J. Devlin Hartline, Assistant Director, Center for the Protection of Intellectual Property (CPIP) and Adjunct Professor, Antonin Scalia Law School, George Mason University

Courthouse Steps: Amgen, Inc. v. Sandoz, Inc. - Podcast

Intellectual Property Practice Group Podcast
Andrew A. Hufford April 28, 2017

The Biologics Price Competition and Innovation Act of 2010 (42 U.S.C. § 262) created an abbreviated pathway for FDA approval of biological products determined to be “biosimilar” to a reference product. The Act outlines a patent resolution and information exchange scheme, with litigation safe harbors during this “patent dance.”

Subsection (l)(2)(A) provides that not later than 20 days after the application is accepted for review, “…the subsection (k) applicant – shall provide to the reference product sponsor a copy of the application…and other information that describes the processes used to manufacture the biological product…” Subsection (l)(8)(A) provides “[t]he subsection (k) applicant shall provide notice to the reference product sponsor not later than 180 days before the date of the first commercial marketing of the biological product licensed under subsection (k).”

In 2015, Sandoz filed a subsection (k) application based on Amgen’s filgrastim (Neupogen®), but refused to provide its (l)(2)(A) disclosure and claimed that pre-FDA approval notice satisfied (l)(8)(A). Amgen sued in federal court on state law claims of unfair competition and conversion, and patent infringement, and requested a preliminary injunction. The district court granted Sandoz’ motion for partial summary judgment, holding that (l)(2)(A) disclosure was optional and that Sandoz did not have to wait for FDA approval before providing (l)(8)(A) notice.

In a fractured opinion, the Federal Circuit affirmed on the (l)(2)(A) issue, holding that subsection (l)(9)(C) provided a remedy for the reference product sponsor to bring an immediate declaratory judgment action if the subsection (k) applicant failed to provide its (l)(2)(A) information, showing that disclosure was optional. The court reversed on the (l)(8)(A) issue, holding that notice before the FDA approved the subsection (k) application was ineffective under the statute. The Court granted certiorari on both issues.

This case presents intriguing questions of statutory interpretation, as the boundaries of the BCPIA are explored.


  • Mr. Andrew A. Hufford, Intellectual Property Attorney, Brinks Gilson & Lione

Courthouse Steps: TC Heartland v. Kraft Foods - Podcast

Intellectual Property Practice Group Podcast
J. Devlin Hartline March 29, 2017

The question presented in TC Heartland LLC v. Kraft Foods Group Brands LLC is seemingly straightforward: Does the statute governing venue generally, 28 U.S.C. § 1391(c), supplement the patent venue statute, 28 U.S.C. § 1400(b)? In particular, the issue is whether § 1391(c)(2)’s broad residency definition, which provides that a corporate defendant “shall be deemed to reside . . . in any judicial district in which such defendant is subject to the court’s personal jurisdiction,” should be read into § 1400(b), which provides that a patent infringement action “may be brought in the judicial district where the defendant resides.” If a corporate defendant “resides” wherever a court has personal jurisdiction over it, a patent owner will typically have many choices of where it may sue that corporation for infringement.

TC Heartland is incorporated and headquartered in Indiana, while Kraft Foods is incorporated in Delaware and headquartered in Illinois. Kraft Foods sued in the District of Delaware, arguing that TC Heartland established personal jurisdiction—and thus venue—when it knowingly shipped a large number of allegedly infringing goods into that forum. The Federal Circuit held that the patent venue statute is supplemented by the broad definition of residency in § 1391(c). TC Heartland now asks the Supreme Court to reverse the decision and to hold that § 1400(b) is the sole and exclusive statute governing venue in patent infringement actions.

The case itself has garnered much attention because the same broad venue rules also allow non-practicing entities—so-called “patent trolls”—to sue in the Eastern District of Texas. Indeed, the policy implications of the case have taken center stage among many commentators.

The issue of where patent owners may sue alleged infringers is an important one, and this case will determine whether patent owners, like federal plaintiffs generally, have numerous choices, or whether they are limited by the narrow patent venue rules that the Supreme Court has already said should stand alone.


  • Prof. J. Devlin Hartline, Assistant Director, Center for the Protection of Intellectual Property (CPIP) and Adjunct Professor, Antonin Scalia Law School, George Mason University