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Intellectual Property Report

Client Updates

Baker Botts Intellectual Property Group Gains Two New Leaders
Robert Scheinfeld, former Partner-in-Charge of Baker Botts’ New York office and head of the firm’s New York IP section for more than 15 years, has been named Co-Chair of the firm’s Intellectual Property Department. He joins Dallas IP partner Bart Showalter as Department Co-Chair, and will assume the role of sole Chair on January 1, 2020. Sarah Guske was also named head of the San Francisco IP section, effective September 1, 2019.
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Strengthening Patent Enforcement: The STRONGER Patent Acts of 2019
Mark Oda
Patent reform has been a popular topic in Congress over the past few months, with both branches of Congress making bipartisan efforts to address patent eligibility, post-grant validity proceedings, and bad faith “patent troll” harassment. Earlier this year, the Senate Judiciary Committee held three days of hearings on proposed changes to the laws of patent eligibility. The Support Technology & Research for Our Nation’s Growth and Economic Resilience (“STRONGER”) Patents Act of 2019, introduced on July 10th by Senator Chris Coons and House Representative Steve Stivers, attempts to “protect the property rights” of patent owners with “strong patent protections .” The proposed legislation does not address patentability standards, but instead focuses on limiting the availability of post-grant validity proceedings before the U.S. Patent and Trademark Office (“USPTO”), strengthening infringement enforcement mechanisms, and empowering the Federal Trade Commission and State Attorneys General to bring civil actions with fines of up to $5,000,000 for sending bad faith, patent-related demand letters.
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State Sovereign Immunity Does Not Bar IPRs
Jennifer Nall, Clark Oberembt, Aïda Liman-Tinguiri
The Federal Circuit held in Regents of the University of Minnesota v. LSI Corp. that state sovereign immunity does not preclude inter partes review (IPR) proceedings of patents held by sovereign entities.1 The unanimous precedential opinion, authored by Judge Dyk, reads as a logical extension of the court’s reasoning that tribal immunity does not bar IPR proceedings in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.2 In an unusual move, the panel also provided another section of unanimous “additional views.”3 The end result is that under Regents, state universities are now shieldless in AIA reviews, and, in light of the Supreme Court’s recent decision that government entities are not persons that can petition for IPR, state universities may be swordless in that context as well.
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Legacy of TC Heartland: The Impact of the Landmark Case on Patent Venue and Litigation is Still Being Felt Two Years On
Jonathan Rubenstein, Patrick Plassio
Where to file a lawsuit is a critical decision that affects every stage of the case. It is especially important in patent infringement lawsuits, where local patent rules vary in form, substance, and existence across the US. A judge’s experience and track record with patent infringement cases could also drive parties to or away from certain districts, as could the jury pool, which varies significantly around the country, and sometimes even within a single state.
The Supreme Court’s 2017 TC Heartland opinion1 changed the law of patent venue and the landscape of patent litigation. New hotbeds for patent litigation emerged alongside new legal interpretations. Two years later, though, questions remain about where a patent case may be brought.
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*This article was first published in the Intellectual Property Magazine's September edition.

Baker Botts Webinar: Everything You Want to Know About Cartels (But Were Too Afraid to Ask)
Join our US and European competition law practitioners on Thursday, September 19th, for a discussion on the latest trends and challenges in cartel investigations and enforcement. The panel will explore:

  • The expanding and increasingly blurred concept of what is a cartel
  • Does it (still) make sense to blow the whistle?
  • New DOJ policies incentivizing corporate compliance
  • Handling the increasingly complex and diverse international enforcement landscape.

Baker Botts speakers will include Peter Huston, Erik Koons, Matthew Levitt and John Taladay.
For more information, please click here.

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