Welcome to Skilled in the Art. I’m Law.com reporter Scott Graham. The Federal Circuit’s motions panel has been working overtime. It’s issued three mandamus opinions on patent venue, each time warning that such pretrial rulings are “rarely granted.” I’ll run down the two latest. Plus, we’ll look at another eight-figure “exceptional case” fee award and who’s stepping into a $706 million trade secrets appeal. Oh, and in case you missed it, the latest Apple-Samsung trial is underway

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Patent Owners Take Two More Hits on Venue

In last Friday’s Skilled in the Art, in a brief item about the In re HTC venue decision, I read Federal Circuit Chief Judge Sharon Prost as warning that the court had had enough TC Heartland-related mandamus petitions. “Future challenges might have to wait until after trial,” I surmised from her opinion.

I couldn’t have been more wrong! On Monday in In re ZTE, the court held that plaintiffs bear the burden of proving proper venue. And today, the court in In re BigCommerce said that a company incorporated in a state with multiple judicial districts can be sued only in the district where it’s incorporated—not any district in the state.

Proponents of ZTE hailed it as a “landmark decision.” I’m not ready to go that far, given that Judge Richard Linn wrote that “we have found no case in this court’s 37-year history dealing with this question.” For landmark status in my book, an issue has to get raised on appeal every once in a while.

Still, Linn did observe that placement of the burden is “critical” to determining the correct forum, and noted that there’s disagreement among the regional circuits outside the patent context. So it’s a big deal. Congratulations to a McDermott Will & Emery team led by Charlie McMahon.

I’ve written about BigCommerce before. The software company is incorporated in Austin, which is in the Western District of Texas. Patent owners Diem and Express Mobile sued in the Eastern District. U.S. District Judge Rodney Gilstrap OK’d the suits, pointing to language in TC Heartland that a company resides “in its state of incorporation for purposes of the patent venue statute.”

Durie Tangri partner Mark Lemley (pictured) argued that TC Heartlandcouldn’t have decided that issue, because it arose from Delaware, which spans a single judicial district.

Linn agreed with Lemley. Section 1400(b) says patent infringement suits “may be brought in the judicial district where the defendant resides,” the judge noted.

“A plain reading of ‘the judicial district’ speaks to venue in only one particular judicial district in the state,” Linn wrote. “This language is simply inconsistent with the understanding that a defendant resides in all districts in the state.”

Lemley said Tuesday he expects the ruling to have the biggest impact in Texas, where many companies are being targeted in districts where they’re not incorporated. “It will also matter in California,” he said, “not because we will all end up in Sacramento, but because plaintiffs won’t get the choice to sue in CD-Cal or SD-Cal if the company is up here [in Silicon Valley], and vice versa.”


 

No Drug Manufacturing, No Standing

Gary Frischling and his Irell & Manella colleagues have been defending Gilead Sciences against a patent and antitrust lawsuit that targeted the company’s HIV medicine known as TAF. U.S. District Judge William Alsupdealt the suit a body blow last year, and on Friday the Federal Circuit delivered the knockout punch. Judge Pauline Newman wrote for the Federal Circuit that nonprofit AIDS Healthcare Foundation doesn’t have standing to bring the suit.

The foundation, which provides medical care to people with AIDS, accused Gilead of inflating prices by relying on invalid patents and an illegal tying arrangement wherein TAF is marketed only as part of a fixed-dose combination.

The foundation dropped the antitrust theory on appeal and sought only standing to bring a DJ action to declare five patents invalid. The goal was to “clear out the invalid patents” so that it “would have the ability then to partner with generic makers and purchase generic TAF” as soon as possible after Gilead’s five-year exclusivity period expires.

Newman agreed with Gilead and Irell that that the foundation had not proven an actual controversy necessary for standing. “Healthcare argues that public policy is served by invalidation of invalid patents, and thus supports immediate challenge to the ‘weak’ TAF patents,” Newman wrote. “Yet the Hatch-Waxman Act is already a balance of several policy interests, seeking to preserve the patent incentive to invent new drugs, while enabling validity challenge by ANDA filers before actual infringement occurs.”

Coincidentally, former Irell managing partner Andrei Iancu, now the director of the USPTOhas also cautioned that the use of IPRs to challenge pharmaceutical patents may upset that same balance.

In addition to Frischling, Gilead was represented by partners Keith Orso and Jason Sheasby and associates John Lu and John Long. The AIDS Healthcare Foundation was represented by Los Angeles-based Berger & Hipskind.


 

Ho-Hum, Another $14 Million Exceptional Case Award

Are eight-figure “exceptional case” attorney awards becoming a thing?I ask because last week I wrote about Merck & Co. dropping its appeal of a $14 million fee award to Gilead Sciences in a San Jose case. On Monday, U.S. District Judge William Walls of New Jersey unsealed an order directing Howmedica Osteonics Corp. to pay $13.6 million in fees and costs to Zimmer Corp. and Centerpulse Orthopedics.

Walls hasn’t yet unsealed the opinion explaining his reasons. Zimmer—which is represented by Kirkland & Ellis, Latham & Watkins and Tompkins, McGuire, Wachenfeld & Barry—had accused Howmedica in its motion of misconduct when obtaining its patents, in litigation and during reexamination proceedings before the PTO.

Howmedica, represented in the fee litigation by McAndrews, Held & Malloyand Gibbons, argued that it had simply lost “11 years of hard-fought litigation between sophisticated competitors” over groundbreaking medical implants.

It should be interesting reading if Judge Walls’ opinion meets the light of day.


 

Kirkland’s Big British Hire

Speaking of Kirkland, my ALM colleague Rose Walker reports that the firm just hired Allen & Overy global intellectual property chief Nicola Dagg in London. “Nicola is one of the leading lights of the U.K. intellectual property community,” Kirkland chairman Jeffrey Hammes said.

Dagg had joined Allen & Overy from legacy Lovells, where she was a partner, in 2006.


 

Does That $1.7B Come With IP Protection?

Wow, so Telegram has raised $1.7 billion to operate the Telegram Open Network (TON), and it didn’t nail down the IP for its tokens? That’s my initial reaction to my colleague Ben Hancock’s report Monday that Telegram is suing a rival crypto-exchange for infringing its “gram” service mark.

Both Telegram and Florida-based Lantah plan to refer to their cryptocurrencies as “grams.” Now that Lantah is trying to register the mark, Telegram is suing, saying it’s been using the gram mark in commerce since all the way back in January, in purchase agreements that will become effective when TON is launched.

Telegram has some good lawyers—Skadden, Arps, Slate, Meagher & Flomfiled the complaint—and its case may well have merit, but I would have thought that if I were concerned about someone infringing my mark on a unit of currency, 1) I wouldn’t have used one of the world’s most generic terms for a unit of measurement and 2) I would have registered the damn mark.


 

Who Got the Work?

Remember when real estate appraisal software company HouseCanary won a $706 million trade secrets verdict against a Quicken Loans affiliate?

The affiliate, AmRock Inc., sure hasn’t forgotten. AmRock, which was represented by Greenberg Traurig in the Texas state court case, has brought aboard Gibson Dunn & Crutcher and a former justice of the Texas Court of Appeal for post-trial and appellate proceedings.

A Texas jury found that AmRock used a license agreement as subterfuge to reverse-engineer its own automated model for home valuations. The verdict included $403.2 million in punitive damages. Susman Godfrey won the verdict for HouseCanary.

“This is a stark example of a jury that was hoodwinked and got it wrong,” Randy Mastro, the co-chair of Gibson’s litigation department, said in a written statement. Gibson partner Veronica Lewis is running point for Gibson on post-trial motions while partner Helgi Walker is leading the firm’s appellate team. Langley & Banack partner Catherine Stone, formerly the chief justice of Texas’ Fourth Court of Appeals, will act as lead counsel on appeal for AmRock.


 

What It Takes to Bill 3,600 Hours

“He just tears into it, and he’s happy to do it.”

That’s Howard & Howard IP partner Daniel Bliss’ approach to work, according to his partner Gerald McGlynn. That partly explains how Bliss billed a remarkable 3,600 hours in 2017. There’s also the willingness to work from 7 to 7 each weekday, work weekends, and draft patent applications on airplanes. My ALM colleague Brenda Sapino Jefferies has details here.


That’s all from Skilled in the Art this week. We’ll see you again Friday!