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U.S. Supreme Court puts an end to venue shopping in patent litigation


By Jesse Schwartz
Published: May 24th, 2017

The U.S. Supreme Court has overturned a nearly 30-year Federal Circuit precedent that had created the oft-criticized practice of venue shopping in patent suits and given rise to the Eastern District of Texas as the “rocket docket” where plaintiffs came in droves to what was known as a friendly court. The Texas court had more recently become a favored venue for “patent trolls,” and the ruling is expected to help at least some chilling effect on those patent assertion entities.

The Supreme Court on Monday ruled unanimously in favor of TC Heartland LLC, an Indiana-based maker of water flavorings, which had argued that a Kraft Heinz Co. unit shouldn’t be allowed to sue it in Delaware because Kraft was not incorporated there. The high court agreed, saying patent suits should be filed in the state where the defendant is incorporated.

The key impact of the ruling is that it will bar many patent owners from pressing cases in the Eastern District of Texas, where more than one-third of all infringement suits are now filed. “It’s going to send cases back to their natural home, and for most cases that is not the Eastern District of Texas,” said Sarah Guske, a patent lawyer with Baker Botts in San Francisco. “It does change the dynamics.”

The decision reversed a Fed Circuit ruling that had held sway since 1990, a holding that allowed infringement claims to be filed in any venue where a business sold products, regardless of where they were incorporated. The opinion by Justice Clarence Thomas did not mention the Texas court, focusing only on the legal question of whether patent cases should be treated any differently than other civil suits.

Given its large number of companies incorporated there, Delaware — already the second-busiest state for patent cases — is likely to see a surge in lawsuits filed there, Guske said. Northern California will also likely see a spike, given all the tech companies based there, while some cases may no longer reach courts at all, predicted Ronen Arad, director of forensic services for consultancy firm PwC.

House Judiciary Committee Chairman Bob Goodlatte (R-VA) said the decision “will help rein in abusive forum shopping,” while also pointing to the prospect of more comprehensive legislation. “I look forward to continuing discussions with stakeholders on other aspects of abusive patent litigation and how we keep our patent laws up to date to ensure a well-functioning patent system,” Goodlatte said.

Silicon Valley cheered the ruling as well. Tech companies say venue shopping has allowed patent trolls to thrive while corrupting the patent system. Indeed, said Ed Black, president of the Computer and Communications Industry Association, more action is needed to curb such abuse. Restrictions on the free-for-all in patent suits have been opposed by drugmakers and other companies like chipmaker Qualcomm that rely on patents to protect their products from competition or to provide a significant source of revenue.

Mark Whitaker, a patent lawyer with Morrison & Foerster in Washington and president of the American Intellectual Property Law Association, said the Supreme Court decision is sensible. “A more nuanced approach needs to be taken,” Whitaker said. “If the patent venue statute is going to mean anything, then there has to be some nexus with the patented activity.”

Source: Bloomberg Politics

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CRISPR Confusion: A Legal and Practical Analysis for IP Professionals


By Jesse Schwartz
Published: May 24th, 2017

CRISPR technology holds the promise of providing researchers and technologists with the most powerful genetic tool since the biotechnology revolution began forty years ago. However, legal disputes over patent rights have clouded the prospects for broad dissemination of the technology. In particular, the two university owners of the patents and applications for CRISPR, MIT/Harvard’s Broad Institute and the University of California-Berkeley, have been locked in a bitter interference over which group of inventors has priority.

The Patent Trial and Appeal Board decided earlier this spring that there was no interference between the competing claims. But this is not a best outcome for potential licensees, leaving open the prospect that separate licenses will be needed from both patent owners. The case has not only complicated the promulgation and commercialization of CRISPR-based research, it is also raising important issues surrounding patent practice and licensing, particularly in biotech.

Technology Transfer Tactics’ Distance Learning Division has recruited Kevin E. Noonan, partner with McDonnell Boehnen Hulbert & Berghoff LLP and Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group, to lead this critical and timely webinar, scheduled for June 27th: CRISPR Confusion: A Legal and Practical Analysis for IP Professionals. For complete program details and to register, CLICK HERE.

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Mistake by Congress in AIA puts thousands of university patents at risk


By Jesse Schwartz
Published: May 24th, 2017

A guest column by IP attorney Andrew S. Baluch in the May issue of Technology Transfer Tactics provides an important heads up for TTOs. Due to an acknowledged error in crafting the America Invents Act, universities that filed provisional patent applications in as the assignee, rather than in the name of the actual inventor, could lose their patent entirely, Baluch points out.

This is no small matter, Baluch warns. “In fact, assignee filings have become so popular in the last four years that today over 10,000 U.S. patents have issued just to universities listed as the applicant.”

He continues: “The problem is that Congress forgot about provisional patent applications. Universities routinely file a provisional application in the first instance and then, within one year, file a regular application that claims priority back to the provisional. Congress unfortunately forgot to change part of the old law, which continues to say that a regular application enjoys the filing date of a provisional application only if the regular application was ‘filed by an inventor’ named in the provisional.

Although everyone involved knows there’s a problem, attempts to fix it have been waylaid by the political process since each effort has been attached to another more controversial bill.

“This small distinction may end up making a huge difference. The owners of these patents may lose their ability to rely on their provisional applications, which means that “prior art” published after the provisional but before the regular application might invalidate the patent claims.”

The full article is available in the May issue. To subscribe, CLICK HERE, and also gain access to more than 10 years of archived best practices and success strategies for TTOs.

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Takeover bid that would create a massive commercialization company fails, at least for now


By Jesse Schwartz
Published: May 24th, 2017

University technology commercialization is very big business in England, where a large publicly traded firm attempted a takeover of a rival firm but was rejected in its initial offer. Touchstone Innovation, the tech transfer firm originating out of Imperial College London, rejected a merger merger proposal from IP Group that would have created a £1.3 billion megacompany. continue reading »

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Oracle to launch new start-up accelerator in partnership with award-winning UK incubator


By Jesse Schwartz
Published: May 24th, 2017

Global tech company Oracle is launching a new start-up accelerator in Bristol, in partnership with one of the world’s leading university incubators. continue reading »

Don't miss another strategy-packed issue of Industry-Sponsored Research Management!

CLICK HERE to save $100 on your subscription and get a free distance learning collection, “Best Practices in Forming and Managing Industry-University Partnerships”.

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ONL closes $4.25m funding round to advance treatment for retinal disease


By Jesse Schwartz
Published: May 24th, 2017

ONL Therapeutics, a University of Michigan-spawned biopharmaceutical company focused on treating retinal diseases, has closed a $4.25 million Series A funding round. continue reading »

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U of Central Florida start-up develops lung simulator to improve cancer treatment


By Jesse Schwartz
Published: May 24th, 2017

A start-up from the University of Central Florida (UCF) is developing a human lung simulator to help oncologists deliver radiation more effectively to lung tumors. continue reading »

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Italy is getting its first tech transfer fund for biotechnology


By Jesse Schwartz
Published: May 24th, 2017

A new Milan-based economic development company is giving Italy its first-ever biotech fund for tech transfer. continue reading »

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Clemson start-up improves on current radiosurgery devices


By Jesse Schwartz
Published: May 24th, 2017

A Clemson University start-up is working to drastically improve the costs and outcomes of radiosurgery. continue reading »

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Managing Conflicts of Interest in the Commercialization of University Research


By Jesse Schwartz
Published: May 24th, 2017

Managing conflicts of interest (COIs) between funding sources, faculty researchers, and the start-ups they create is always a tough challenge for tech transfer, sponsored research, and compliance offices that requires much coordination and careful handling. Although tech transfer and research managers recognize that conflicts are a given during the process of transferring IP either through a license agreement, spinout, or partnership, managing and mitigating those COIs is a seemingly never ending battle — and it’s fraught with danger not only for the university, but also for its faculty.

That’s why we’re created the three-session distance learning collection Managing Conflicts of Interest in the Commercialization of University Research, to provide a solid set of guidelines and proven strategies to ensure COI issues related to commercialization activity are addressed effectively. These three programs are included in the collection:

  • Blurred Lines and Gray Areas: Managing Conflicts of Interest in University Tech Transfer and Sponsored Research
  • Ensuring Compliance with Financial Conflict of Interest Regs
  • Best Practices for Managing Conflicts of Interest in Faculty Start Ups

For complete program and faculty details, or to order, CLICK HERE >>

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U of Toronto incubator launches cross-country expansion


By Jesse Schwartz
Published: May 24th, 2017

The Creative Destruction Lab (CDL) at the University of Toronto (U of T) is launching a cross-country expansion that will create CDLs at the University of Calgary, Dalhousie University, the University of British Columbia and HEC Montreal. continue reading »

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MIT launches accelerator to help student architects become entrepreneurs


By Jesse Schwartz
Published: May 24th, 2017

The Massachusetts Institute of Technology (MIT) has created a new accelerator to help architecture students become more prepared for launch their own businesses and tap into the entrepreneurship movement in a field that hasn’t always focused on business creation opportunities. continue reading »

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