Patent litigation post plan overwhelms the courts

Enacted on 16 September 2011, the Leahy-Smith America Invents Act (AIA) was the most comprehensive patent reform legislation in the United States in over 60 years. Since enactment of the AIA, new legislation concerning intellectual property rights has been largely absent. By contrast, the courts have been quite active in shaping intellectual property law, including clarifring provisions of the AIA.

ii Court opinions

TC Heartland LLC v. Kraft Foods Group Brands LLC (decided 22 May 2017) (Supreme

Court)

At issue in TC Heartland was the proper venue for district court patent cases. While there are 94 federal judicial district in the United States, procedural law dictates in which districts a patentee can bring an infringement lawsuit. In TC Heartland, the Supreme Court decided that under the patent-specific venue statute, a patent infringement lawsuit could only be brought where the defendant resides, which, for a corporation, is its place of incorporation or its principle place of business. This is in stark contrast with decades of past practice where patent cases were brought throughout the country, premised on the fact that patent infringement typically occurs nationwide. As a result of this change, patent cases now have shifted away from patentee-friendly districts such as the eastern district of Texas and toward districts with more corporations such as the district of Delaware. This has led to a backlog in certain districts (i.e., the district of Delaware). Also, the decision has led to extensive motion practice by defendants to change venue, which has frequently succeeded (especially where the case was recently filed). Another potential change as a result of this decision is that plaintiffs seeking to sue multiple defendants on the same patents will need to file multiple actions in different districts. 'Ihis in turn may lead plaintiffs to consolidate the cases in one district for discovery purposes. Such practice is referred to as multi-district litigation and generally will add to an increase in complexity and costs of the actions.

Matal v. Tam (decided 19 June 2017) (Supreme Court)

In Matal v. Tam, the Supreme Court held that free speech rights under the First Amendment trump a trademark law prohibiting registering 'disparaging' terms as federal trademarks. The trademark at issue was THE SLANTS, a racial slur. The court held that government censorship of allegedly 'disparaging' trademarks violated the free speech clause of the First Amendment, thereby expanding the terms eligible for federal trademark protection.

Sandoz Inc v. Amgen Inc (decided 12 June 2017) (Supreme Court)

The Supreme Court recently decided two related cases involving the Biologics Price Competition and Innovation Act of 2009 (BPCIA), the law providing for generic biologic drugs (i.e., biosimilars) in the United States. In these two consolidated cases, the Supreme Court held that notice of commercial marketing provided by a biosimilar applicant before FDA approval is effective under the law. The Court also ruled that the BPCIA is not enforceable by injunction under federal law, thereby preventing patent holders from filing declaratory judgment actions in an attempt to enforce any of the provisions under the BPCIA.

Oil States Energy Services LLC v. Gtvends Energy Group LLC (argued 27 November 2017) (Supreme Court)

In what is the most eagerly anticipated patent case currently pending before the Supreme Court, the issue is whether inter partes review (IPR) at the Patent Offce is constitutional. Added as part of the AIA, IPRs have become a popular forum to challenge the validity of issued patents. These proceedings are conducted by the Patent Offce and, while quasi-judicial in nature, are not conducted by a district court. As patent rights are considered private rights in the United States, the argument before the Supreme Court focuses on whether the Patent Offce, which is not part of the judiciary, can take back private rights after they are granted. As the Patent Offce is part of the executive branch of the US government, it was argued that separation of powers would only allow the judicial branch to decide the rights could be taken away. This case may dramatically alter the IPR process, including the possibility of limiting which patents are subject to IPR or disbanding the process altogether.