Part I (of II): Federal Circuit Trends of 2016

Authors:Alissa Lipton, Eric Raciti

Editor:Lauren J. Dreyer

Join us as we review what has been an exciting year at the Federal Circuit and help ring in 2017 with a New Year’s reception at Finnegan’s Boston office on Wednesday, January 11, 2017! We will provide insights on the top Federal Circuit decisions and trends of 2016.

In Part I of this two-part series, we highlight some of the issues we will discuss on January 11:

Venue Statute

On December 14, 2016, the Supreme Court granted cert. in TC Heartland LLC v. Kraft Food Brands Group LLC (16-341), a case that may significantly impact the determination of venue in patent infringement suits. The issue to be decided is whether the federal patent venue statute, 28 U.S.C. § 1400(b), is the sole and exclusive provision controlling venue in patent infringement actions, or whether it is supplemented by the provisions of 28 U.S.C. § 1391(c), the general corporate venue statute.

The Federal Circuit has held that the definition of corporate residence from the general corporate venue statute applies to the patent venue statute. As a result, currently, a corporation in a patent infringement suit is deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced. If the Supreme Court were to agree with the petitioners and reverse the Federal Circuit’s holding, however, proper venue in a patent litigation suit may be limited to the defendant corporation’s state of incorporation only.

Post-Williamson Developments in Functional Claiming

The use of functional language in patent claims to describe what something does, rather than what it is, has been a point of controversy since the mid-19th century. The landscape is always changing, but many traps for the unwary have been among us for decades. Understanding the contours of the proper legal interpretation of functional claim language helps the prosecutor and the litigator alike to recognize opportunities and pitfalls that come with functional descriptions in patent claims.

To learn more about the trends and key cases of 2016, or to register to attend, click here.

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