MENU

Intellectual Property

Subscribe in a reader

Subcommittees

  • Biotechnology
  • Computer Law
  • Copyrights
  • International Practice
  • Internet
  • Patents

Courthouse Steps: TC Heartland v. Kraft Foods

Intellectual Property Practice Group
J. Devlin Hartline March 27, 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.

Featuring:

  • 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: Impression Products v. Lexmark International and the Law of Patent Exhaustion

Intellectual Property Practice Group Podcast
David S. Olson March 22, 2017

May a patent owner use contracts to prohibit any resale or reuse of its patented products beyond the initial purchaser? OnTuesday, March 21, 2017, the Supreme Court will hear oral argument in Impression Products v. Lexmark International, which raises this important question.

Lexmark makes patented toner cartridges and sells them with a contract restriction that the cartridges not be resold or refilled. Impression Products buys used Lexmark toner cartridges, refills, and resells them. Lexmark argues that because the license accompanying the original sale of the cartridges prohibits transferring the cartridges, any reuse and refilling of the cartridges is an unauthorized use and thus a patent infringement. If Lexmark’s argument wins, then manufacturers of patented goods will be able to restrict downstream uses of their goods by use of licenses, and no privity of contract will be required to hold third parties liable. On the other hand, defendant Impression Products argues that the “patent exhaustion” doctrine should operate here to restrict Lexmark from asserting any patent rights after a first, authorized sale. Also at issue is whether first sales in foreign countries instead of the U.S. should affect the outcome.

The case will have significant effects on the ability of patent owners to control the downstream uses of their patented products, and may affect the ability of patent owners to prevent the importation of “grey market” goods that have been lawfully sold in other countries, similarly to the Supreme Court’s holding in the 2013 copyright case of Kirtsaeng v. John Wiley & Sons, Inc. 

Professor David Olson of Boston College Law School offered impressions and predictions after the Court heard oral argument.

Featuring:

  • Prof. David S. Olson, Associate Professor, Boston College Law School

Courthouse Steps: Impression Products v. Lexmark International and the Law of Patent Exhaustion

Intellectual Property Practice Group
David S. Olson March 21, 2017

May a patent owner use contracts to prohibit any resale or reuse of its patented products beyond the initial purchaser? OnTuesday, March 21, 2017, the Supreme Court will hear oral argument in Impression Products v. Lexmark International, which raises this important question.

Lexmark makes patented toner cartridges and sells them with a contract restriction that the cartridges not be resold or refilled. Impression Products buys used Lexmark toner cartridges, refills, and resells them. Lexmark argues that because the license accompanying the original sale of the cartridges prohibits transferring the cartridges, any reuse and refilling of the cartridges is an unauthorized use and thus a patent infringement. If Lexmark’s argument wins, then manufacturers of patented goods will be able to restrict downstream uses of their goods by use of licenses, and no privity of contract will be required to hold third parties liable. On the other hand, defendant Impression Products argues that the “patent exhaustion” doctrine should operate here to restrict Lexmark from asserting any patent rights after a first, authorized sale. Also at issue is whether first sales in foreign countries instead of the U.S. should affect the outcome.

The case will have significant effects on the ability of patent owners to control the downstream uses of their patented products, and may affect the ability of patent owners to prevent the importation of “grey market” goods that have been lawfully sold in other countries, similarly to the Supreme Court’s holding in the 2013 copyright case of Kirtsaeng v. John Wiley & Sons, Inc. 

Professor David Olson of Boston College Law School will offer impressions and predictions after the Court hears oral argument.

Featuring:

  • Prof. David S. Olson, Associate Professor, Boston College Law School

Impression Products v. Lexmark International and the Law of Patent Exhaustion - Podcast

Intellectual Property Practice Group Podcast
Adam Mossoff, David S. Olson, Steven M. Tepp, Kristen Osenga March 09, 2017

The Federalist Society will host a teleforum discussion of Impression Products v. Lexmark International, which is scheduled for argument before the Supreme Court March 21, 2017. At issue in the case is whether a patent owner may use a combination of patent rights and contract law to restrict what purchasers of patented printer toner cartridges may do with the cartridges. Lexmark makes patented toner cartridges and sells them with a restriction that the cartridges not be resold or refilled. Impression Products buys used Lexmark toner cartridges, refills, and resells them. Lexmark argues that Impression Products’ toner refilling activities violate Lexmark’s patent rights because the license to use the patented product that was given to consumers prohibited refilling, thus putting such use and resale of the patented products outside of the scope of the patent license, in violation of Lexmark’s patent rights. For its part, Impression Products argues that the “patent exhaustion” doctrine should operate here to restrict Lexmark from asserting any patent rights after a first, authorized sale. Also at issue is whether first sales in foreign countries instead of the U.S. should affect the outcome.

The case will have significant effects on the ability of patent owners to control the downstream uses of their patented products, and may affect the ability of patent owners to prevent the importation of “grey market” goods that have been lawfully sold in other countries, similarly to the Supreme Court’s holding in the 2013 copyright case of Kirtsaeng v. John Wiley & Sons, Inc. 

Featuring:

  • 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
  • Prof. David Olson, Associate Professor, Boston College Law School
  • 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

Impression Products v. Lexmark International and the Law of Patent Exhaustion

Intellectual Property Practice Group Teleforum
Adam Mossoff, David S. Olson, Steven M. Tepp, Kristen Osenga March 08, 2017

The Federalist Society will host a teleforum discussion of Impression Products v. Lexmark International, which is scheduled for argument before the Supreme Court March 21, 2017. At issue in the case is whether a patent owner may use a combination of patent rights and contract law to restrict what purchasers of patented printer toner cartridges may do with the cartridges. Lexmark makes patented toner cartridges and sells them with a restriction that the cartridges not be resold or refilled. Impression Products buys used Lexmark toner cartridges, refills, and resells them. Lexmark argues that Impression Products’ toner refilling activities violate Lexmark’s patent rights because the license to use the patented product that was given to consumers prohibited refilling, thus putting such use and resale of the patented products outside of the scope of the patent license, in violation of Lexmark’s patent rights. For its part, Impression Products argues that the “patent exhaustion” doctrine should operate here to restrict Lexmark from asserting any patent rights after a first, authorized sale. Also at issue is whether first sales in foreign countries instead of the U.S. should affect the outcome.

The case will have significant effects on the ability of patent owners to control the downstream uses of their patented products, and may affect the ability of patent owners to prevent the importation of “grey market” goods that have been lawfully sold in other countries, similarly to the Supreme Court’s holding in the 2013 copyright case of Kirtsaeng v. John Wiley & Sons, Inc. 

Featuring:

  • 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
  • Prof. David Olson, Associate Professor, Boston College Law School
  • 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

FTC, Past and Future - Podcast

Telecommunications & Electronic Media and Intellectual Property Practice Group Podcast
Alden Abbott, Maureen K. Ohlhausen February 16, 2017

The Federal Trade Commission has dual missions to protect consumers and competition. The agency has a 100+ years of history as an antitrust enforcer and general consumer protection agency. And over the last 20 years it has emerged as the lead U.S. agency addressing consumer privacy and data security. During the past administration, the agency faced challenges within and without. How well has it executed its dual missions? What external factors (such as actions by the CFPB and FCC) have affected its ability to further its missions? And how might the agency improve in the coming administration? To answer these questions we'll talk to Heritage Senior Fellow Alden Abbot and FTC Acting Chairman Maureen K. Ohlhausen.

Featuring:

  • Alden Abbott, Deputy Director of the Edwin Meese III Center for Legal and Judicial Studies and the John, Barbara, and Victoria Rumpel Senior Legal Fellow, The Heritage Foundation
  • Hon. Maureen K. Ohlhausen, Commissioner, Federal Trade Commission

 

FTC, Past and Future

Telecommunications & Electronic Media and Intellectual Property Practice Group Teleforum
Alden Abbott, Maureen K. Ohlhausen February 15, 2017

The Federal Trade Commission has dual missions to protect consumers and competition. The agency has a 100+ years of history as an antitrust enforcer and general consumer protection agency. And over the last 20 years it has emerged as the lead U.S. agency addressing consumer privacy and data security. During the past administration, the agency faced challenges within and without. How well has it executed its dual missions? What external factors (such as actions by the CFPB and FCC) have affected its ability to further its missions? And how might the agency improve in the coming administration? To answer these questions we'll talk to Heritage Senior Fellow Alden Abbot and FTC Acting Chairman Maureen K. Ohlhausen.

Featuring:

  • Alden Abbott, Deputy Director of the Edwin Meese III Center for Legal and Judicial Studies and the John, Barbara, and Victoria Rumpel Senior Legal Fellow, The Heritage Foundation
  • Hon. Maureen K. Ohlhausen, Commissioner, Federal Trade Commission

Courthouse Steps: Lee v. Tam - Podcast

Litigation, Intellectual Property, and Free Speech & Election Law Practice Groups Teleforum
Megan L. Brown, Dwayne D. Sam January 19, 2017

Can the government police speech it thinks is offensive, even when members of the group the government seeks to protect disclaim any offense? Section 2(a) of the Lanham Act allows the government to deny trademark registration to "disparaging" speech. On Wednesday, January 18, the Supreme Court will hear oral argument in Lee v. Tam, a case challenging the constitutionality of this statute.

In Lee, an Asian-American rock band called “The Slants” was denied trademark registration after the Patent and Trademark Office found the trademark disparaging to Asians. A panel of the U.S. Court of Appeals for the Federal Circuit affirmed the decision. But the en banc Federal Circuit—without being asked—decided to vacate that decision and consider whether § 2(a) violates the First Amendment. The full Federal Circuit ultimately reversed the panel decision. The federal government then asked the Supreme Court to weigh in.

Is the Court likely to affirm the Federal Circuit decision striking down the disparagement clause as violative of the First Amendment? And what will be the implications if it does? Megan Brown and Dwayne Sam of Wiley Rein LLP attended the oral arguments and offered their impressions and predictions during this Courthouse Steps Teleforum conference call.

Featuring:

  • Ms. Megan L. Brown, Partner, Wiley Rein LLP
  • Mr. Dwayne D. Sam, Associate, Wiley Rein LLP

Courthouse Steps: Samsung v. Apple: Design Patents at the Supreme Court - Podcast

Intellectual Property Practice Group Teleforum
Trevor K. Copeland, Arthur Gollwitzer III, Ryan Holte January 18, 2017

The Federalist Society will host a one hour Teleforum to discuss the recent Supreme Court decision in Samsung v. Apple--a rare Supreme Court design patent case regarding the shape of the face and grid of icons in Apple's iPhones. Trevor Copeland of Brinks Gilson & Lione, Austin and Art Gollwitzer of Michael Best, Chicago will engage over the specific statutory and policy issues in the decision. Prof. Ryan Holte of SIU School of Law will moderate.

Featuring:

  • Mr. Trevor Copeland, Shareholder, Brinks Gilson & Lione
  • Mr. Art Gollwitzer, Partner, Michael Best & Friedrich LLP
  • Moderator: Prof. Ryan Holte, Assistant Professor of Law, SIU School of Law

Courthouse Steps: Samsung v. Apple: Design Patents at the Supreme Court

Intellectual Property Practice Group Teleforum
Trevor K. Copeland, Arthur Gollwitzer III, Ryan Holte January 13, 2017

The Federalist Society will host a one hour Teleforum to discuss the recent Supreme Court decision in Samsung v. Apple--a rare Supreme Court design patent case regarding the shape of the face and grid of icons in Apple's iPhones. Trevor Copeland of Brinks Gilson & Lione, Austin and Art Gollwitzer of Michael Best, Chicago will engage over the specific statutory and policy issues in the decision. Prof. Ryan Holte of SIU School of Law will moderate.

Featuring:

  • Mr. Trevor Copeland, Shareholder, Brinks Gilson & Lione
  • Mr. Art Gollwitzer, Partner, Michael Best & Friedrich LLP
  • Moderator: Prof. Ryan Holte, Assistant Professor of Law, SIU School of Law