Category Archives: Litigation

When I send a draft patent application to an inventor who is new to the patent process, the inventor often asks why the claims seem to repeat themselves. A patent application often has one group of claims directed to a method, and another group directed to an apparatus or system. This can confuse new inventors because the two claim groups often appear to be very similar.

Why the duplication?  There are several reasons.

One reason is that method and apparatus claims can be directed to two separate groups of infringers. A patent gives its holder the exclusive right to make, use and sell the invention. Method and apparatus claims may each define the invention in a slightly different way. Some entities — such as a distributor or retailer — may sell an apparatus, but they will never practice a method of making or using the apparatus. Other entities (such as end users) may use the invention but not make or sell it. Depending on the situation, one set of the claims or the other could be more useful to assert against a particular infringer.

Another reason to include two groups of claims relates to the point in time at which damages start to accrue for infringing activity. Section 287 of the Patent Act limits recovery of damages for making/using/selling a patented article to the point in time where the infringer had actual notice of the patent, or constructive notice of the patent through marking. Because Section 287 refers to “articles” but not methods, courts have generally limited the notice requirement to apparatus claims, not system claims.

This interpretation by the courts dates back to at least 1936, when in Wine Railway Appliance Company v. Enterprise Railway Equipment Company, the Supreme Court said that Section 287 does not limit damages if the patent holder isn’t actually making articles to mark.

More recently, courts have clarified that if a patent is directed only to a method (i.e., there are no apparatus/article claims), Section 287 does not apply and notice is not required. (See Bandag, Inc. v. Gerrard Tire Co.) If a patent includes both apparatus and method claims, then Section 287 does not apply if only the method are asserted. (See, for example:  American Medical System Inc. v. Medical Engineering Corp., Crown Packaging Technology Inc. v. Rexam Beverage Can Co. and Hanson v. Alpine Valley Ski Area, Inc.) Whether or how Section 287 would apply if both types of claims are asserted has not yet been fully addressed by the Federal Circuit. (See Rembrandt Wirless Technologies, LP v. Samsung Electronics Co., Ltd.)

Because of this method/apparatus dichotomy, as well as the fact that Section 287’s notice requirement does not apply to an entity that holds — but does not practice – the patent, the notice requirement has been criticized as primarily benefitting non-practicing entities. However, so far Congress has not considered this issue to be worthy of an amendment to the Patent Act.

In addition, to avoid issues associated with the notice requirement some patent applicants may consider filing patent applications with only method claims or only apparatus claims. This may mean filing two applications on the same day, or filing a second application that claims priority to a first application. This adds to the expense, but it can help reduce the worry that insufficient marking will limit damages when asserting both method and apparatus claims.

A much-anticipated decision from the U.S. Supreme Court has scaled back the ability of patent plaintiffs to choose the forum in which they file suit. By limiting a practice that many defendants consider to be forum shopping by patent plaintiffs, the Court’s decision may shift the geography of patent infringement lawsuits from the East Texas heartland to the coasts.  

In TC Heartland LLC v. Kraft Foods Group Brands LLC, the Court considered the patent venue statute, 28 U.S.C. § 1400(b), which states: “Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” The Court held that a patent infringement defendant “resides” only in its state of incorporation, and that “residence” does not include states where the defendant merely conducts business.

In the case, the defendant was organized under Indiana law and headquartered in Indiana. The plaintiff filed suit in Delaware, into which the defendant shipped product but otherwise had no physical or legal presence. The defendant argued that venue in Delaware was improper under the patent venue statute.

The Court agreed with the defendant. Focusing on the meaning of the phrase “where the defendant resides,” the Court held that the term “residence” means only an entity’s state of incorporation, and the term does not include states where an entity merely does business.

The case may deal a blow to the Eastern District of Texas, which has served as the epicenter of patent patent infringement litigation in recent years. However, the Court did not negate the second half of the patent venue clause, which also supports venue “where the defendant has committed acts of infringement and has a regular and established place of business.” Texas ranks second in a list of states where the most Fortune 500 companies are headquartered. Thus, at least some new cases that previously would have gone to the Eastern District of Texas may now shift to other Texas district courts such as the Northern District of Texas (in which Dallas is located) or the Western District of Texas (in which Austin is located).

It is even more likely that new patent filings will spread out to other venues such as the District of Delaware (where more than 2/3 of the Fortune 500, and more than 1 million companies in total, are incorporated) ; the Northern District of California (home to the tech giants of Silicon Valley); or the Southern District of New York (where more Fortune 500 companies are headquartered than in any other state).

The new decision also will make it harder for patent plaintiffs to sue multiple defendants in a single case. If the accused infringers are organized in different states and have different corporate office locations, the patent holder may need to file multiple suits in multiple states.

[Image credit:  Bram Janssens]

The United States District Court for the Western District of Pennsylvania has proposed a set of changes to its local rules governing patent infringement cases. The proposal would change and clarify several procedures, including:

• the Initial Scheduling Conference will be replaced with a Planning Meeting and Report that will address more than just scheduling, such as whether a special master may be helpful, early motions, the format of the claim construction hearing, and whether a tutorial will be used;
• the plaintiff’s Initial Disclosures must include all documents evidencing ownership of the patent;
• the defendant’s Initial Disclosures must include summary sales or use information about the accused product process;
• the plaintiff must provide a good faith damages estimate within 14 days of the defendant’s disclosure of summary sales information;
• additional model language for a Protective Order is provided;
• more precise pleading requirements for infringement will apply, including additional detail about the specific statutory section(s) asserted, direct infringement, and the doctrine of equivalents;
• new requirements on amendments of contentions, advice of counsel defense, and a prehearing statement.

The changes adapt various requirements that some other courts are already using, along with recent changes to the Federal Rules of Civil Procedure.  The court will accept comments on the proposed changes through July 6, 2015. Additional details are available here.