Blogs, Commentary & News

Klarquist Files Amici Brief in Supreme Court TC Heartland Case on Patent Venue Law

02/06/2017

Klarquist recently filed an amici brief on behalf of four of the country’s most prominent financial services member organizations in a Supreme Court case involving patent venue law that will be argued this spring. The organizations are asking the Supreme Court to follow its longstanding precedent limiting where patent suits may be filed and reject the Federal Circuit’s contrary, permissive interpretation. They argue that the Supreme Court’s interpretation of the patent venue statute is governing law that must be followed and that it advances core public policies of the patent system.

The Federal Circuit’s contrary, permissive approach has led to an explosion of filings in the Eastern District of Texas, where cases are far less likely to be stayed pending Patent Office review proceedings and far less likely to lead to invalidation of improperly granted patents. Approximately 40% of patent lawsuits today are filed in the Eastern District of Texas.

The case is TC Heartland LLC d/b/a Heartland Food Products Group v. Kraft Food Groups Brand LLC. Oral argument is scheduled for March 27. The four amici are American Bankers Association, The Clearing House, Financial Services Roundtable and Consumer Bankers Association. They are represented by Klaus H. Hamm and John D. Vandenberg.

Link to the brief.

Lauer Quoted in Law360 Article Regarding AIA Estoppel Provision

01/27/2017

Klarquist Partner Deakin Lauer was quoted in a January 26 Law360 article titled “AIA Estoppel Provision Not As Restricted As Many Expected.” The article discussed the America Invents Act’s inter partes review estoppel provision, which limits arguments to those seeking to invalidate patent claims that can be raised following PTAB review. The estoppel provision was originally viewed as a significant limitation on the arguments petitioners could raise in litigation following an inter partes review decision. Lauer commented on how recent rulings allowing invalidity arguments to be used later in litigation are transforming the interpretation of this provision.

Law360 subscribers can access the full article here.  A discussion of IPR estoppel can also be found on Klarquist’s PTAB Blog.

Patent Agent Elaine Morlock Joins Klarquist Sparkman, LLP

01/23/2017

Klarquist Sparkman is pleased to announce that patent agent Elaine V. Morlock, Ph.D., has joined the firm.

Dr. Morlock has prepared and prosecuted patent applications covering biotechnology and pharmaceutical technologies including diagnostic methods, pharmaceutical compositions and excipients, immune therapies, antibody therapeutics, and metabolic engineering. Prior to joining Klarquist, Dr. Morlock was a patent agent at Mintz Levin, where she counseled clients and inventors regarding technology and patent processes, performed patentability and freedom to operate searches, and evaluated intellectual property portfolios for financing and licensing opportunities.

Morlock received her Ph.D. in Molecular and Cellular Pharmacology from University of Wisconsin, Madison, and her B.S. in Molecular and Cellular Biology from Cal Poly, San Luis Obispo.

Klarquist and Attorneys Named Among World’s Leading Trademark Professionals for 2017

01/19/2017

Klarquist has been ranked as one of the top trademark law firms in Oregon in the 2017 edition of World Trademark Review’s WTR 1000: The World’s Leading Trademark Professionals. Lisa M. Caldwell, Ramon A. Klitzke II, and Richard J. Polley also received individual recognition for being top individuals in their practice.

According to World Trademark Review, “Klarquist Sparkman delivers a pre-eminent full trademark service with very accommodating billing rates. It has a great IP reputation in Oregon and deals with big-ticket litigation; however, its prosecution practice is also a hub of strategic counselling excellence.”

Attorney Sarah Jelsema Joins Klarquist Sparkman, LLP

12/05/2016

Klarquist Sparkman is pleased to announce that attorney Sarah E. Jelsema has joined the firm.

Sarah focuses her practice on litigation involving patents, trademarks, and trade secrets. She also does some patent prosecution. Prior to joining Klarquist, she was a law clerk at the U.S. Court of Appeals for the Federal Circuit, which hears appeals from district courts nationwide in patent cases. Before clerking, she practiced in Salt Lake City at Workman Nydegger and then Parsons Behle & Latimer, specializing in intellectual property litigation and prosecution. Sarah received her J.D. from Harvard Law School and her B.S. in Biology from Calvin College.

U.S. News and Best Lawyers Ranks Klarquist Sparkman Among the Nation’s Top Law Firms for 2017

11/01/2016

Klarquist Sparkman, LLP was recognized as one of the nation’s “Best Law Firms” by U.S. News and Best Lawyers in its 2017 “Best Law Firms” survey.

Klarquist received metropolitan first-tier rankings in the following practice areas:  Litigation – Intellectual Property; Litigation – Patent; Patent Law; and Trademark Law.

The rankings are based on an evaluation process that involves collecting client and attorney evaluations, peer reviews from leading attorneys in their field and review of additional information provided by law firms. Respondents were asked to rate firms based on expertise, responsiveness, understanding of a business and its needs, cost-effectiveness, civility and whether they would refer another client to the firm. All of the feedback is combined to create an overall score for each firm.

Klarquist Files Brief of SAP America, J.C. Penney Company, and Samsung Electronics as Amici Curiae in Federal Circuit Case on Section 101 Preemption: McRO, Inc. v. Bandai Namco Games America

10/26/2016

One facet of the Section 101 patent-eligibility analysis looks at preemption. The preemption analysis goes back decades to Supreme Court jurisprudence and excludes from patentable subject matter a claim that recites an abstract idea that preempts substantially all uses of that idea in the claim’s technical field.

This Amici brief, filed October 26, 2016, seeks full-court review of McRO to avoid confusion arising from the McRO decision, specifically on the meaning and role of “preemption” in a Section 101 patent-eligibility analysis. The panel held that the claims were directed to using particular “mathematical rules.” It approved the claims primarily because they did not preempt “alternative discoveries” or “alternative rules-based methods.”

Amici argue that the standard “preemption” analysis does not ask about “alternatives”; the standard “preemption” analysis asks whether these claims foreclose (preempt) substantially all uses (implementations), in this technical field, of the specific mathematical algorithm they claim — not alternatives to that idea. “Instead of asking whether the public can use the claim’s idea without infringing the claim, the panel asked whether the public could find some alternative idea to use. This entirely different test clothed in the same standard ‘preemption’ label is bound to confuse judges and examiners.”

Link to the Brief.

Federal Circuit Affirms Another Mentor Graphics Win Over Synopsys Logic Translation Patents

10/17/2016

On October 17, in a precedential opinion, the Federal Circuit affirmed summary judgment granted by Judge Maxine M. Chesney, USDC, Northern District of California, invalidating under Section 101 claims of three Synopsys, Inc. patents.

The claims are directed to “the abstract idea of: translating a functional description of a logic circuit into a hardware component description of the logic circuit.” Judge Chen (with Judges Lourie and Moore on the panel) agreed with the trial court that the claimed translation methods “can be performed mentally or with pencil and paper,” as the named inventors confirmed when they “admitted to performing the steps mentally themselves.”

While the claimed translation technique was designed for use by computers, the asserted claims require no computer or other hardware. Again, this was conceded as “none of Synopsys’ proposed constructions required the use of a computer or any type of hardware,” and Synopsys’ counsel stated at the summary judgment argument that “computers aren’t called out” in the representative patent claim.

The panel dismissed the alleged novelty of the claimed translation technique because “a claim for a new abstract idea is still an abstract idea.” Similarly, it is irrelevant that the claimed translation technique differed from how a human logic-circuit designer would translate such a description, as the Supreme Court in Gottschalk v. Benson faced the same situation and rejected the claims nonetheless.

Finally, the panel noted what was not before it: patent claims directed to a computerized design tool.

A week earlier, on October 11, another Federal Circuit panel affirmed a PTAB decision finding obvious claims of another Synopsys synthesis patent. Synopsys had asserted that patent against Mentor Graphics in the same N.D. Cal. lawsuit before Judge Chesney.

Mentor Graphics was represented in these actions by Kristin L. Cleveland, Salumeh R. Loesch, Jeffrey S. Love, Andrew M. Mason and John D. Vandenberg of Klarquist Sparkman, LLP; Mark E. Miller and George A. Riley of O’Melveny & Myers LLP; and Tom Evans of Mentor Graphics Corporation. Synopsys, Inc. was represented by Philip W. Woo, Patricia Thayer, and Carter Glasgow Phillips of Sidley Austin LLP.

Link to Decision.

The case was also the subject of a Law360 article on October 17, 2016 (Law360 subscribers can access the article here).

Klarquist Files Amici Brief in Supreme Court on Patent Venue Law

10/14/2016

Klarquist recently filed an amici brief on behalf of four of the country’s most prominent financial services member organizations in support of a certiorari petition seeking Supreme Court review of patent venue law. The companies are asking the Supreme Court to follow its longstanding precedent limiting where patent suits may be filed and reject the Federal Circuit’s contrary, permissive interpretation. They argue that the Supreme Court’s interpretation of the patent venue statute advances core public policies of the patent system.

The Federal Circuit’s contrary, permissive approach has led to an explosion of filings in the Eastern District of Texas, where cases are far less likely to be stayed pending Patent Office review proceedings and far less likely to lead to invalidation of improperly granted patents. More than 40% of patent lawsuits today are filed in the Eastern District of Texas. This undermines core policies of the patent statute, including strict scrutiny of government granted monopolies.

The case is TC Heartland LLC d/b/a Heartland Food Products Group v. Kraft Food Groups Brand LLC. The four amici are American Bankers Association, The Clearing House, Financial Services Roundtable and Consumer Bankers Association. They are represented by Klaus H. Hamm and John D. Vandenberg.

Link to the Brief.

Klarquist Secures Federal Circuit Win For Mentor Graphics

10/11/2016

On October 11, the Federal Circuit affirmed a PTAB decision finding Synopsys Inc. memory synthesis patent claims obvious. Synopsys had alleged infringement of the claims by Mentor Graphics Corporation, as part of a lawsuit filed late 2012 in N.D. Cal. The Court stayed that part of the case when the PTAB granted Mentor’s petition for IPR in mid-2014. Before the PTAB, Mentor won a final written decision finding all challenged claims unpatentable as obvious.

On appeal to the Federal Circuit, Synopsys argued that the PTAB decision lacked adequate findings and that substantial evidence did not support the finding of obviousness. Mentor responded that Synopsys had waived many of the arguments presented on appeal and highlighted expert testimony supporting the determination of obviousness.

The Federal Circuit panel consisted of Judges Newman, Dyk, and Clevenger.

Klarquist’s Andrew M. Mason argued on behalf of Mentor at the Federal Circuit. Other team members before the Federal Circuit and the PTAB included Jeffrey S. Love and John D. Vandenberg.

View the Federal Circuit Decision Rule 36 Opinion.