Page 4 - Intellectual Property

S4 | MONDAY, APRIL 4, 2016 | Intellectual Property | NYLJ.COM

By Michael A. Jacobs

And Richard S.J. Hung

Breaking Down Four Big Changes

In Patent Litigation

T he patent landscape arguably has never decision last June in Williamson v. Citrix might try to put their patents into re-issue with court rules, judges and juries there.
Online
undergone so much change so quickly that reversed its prior precedent to obtain more narrowly focused claims. And under current law, plaintiffs have been
as in the last few years. Some of the
on functional claiming and made it easier Executing those options won’t be easy. In relatively free to shop for the forum of their
intense judicial scrutiny of patents is remi- for defendants to invalidate claims on any case, those patent holders probably choosing.
niscent of a bygone era. But in other ways, definiteness grounds. Critics of broad would be wise to be very thoughtful about But a pending case addressing jurisdic-
today’s patent landscape is unlike anything functional claims—those that describe asserting their patents.
tional jurisprudence could change that
we’ve seen, involving new doctrines, proce- what an invention does rather than how While it’s clear the pendulum has swung and diminish the Eastern District’s impor-
dures and forums.
it works—cheered the decision as a step away from software patent holders, the tance. In a case before the Federal Circuit,
All of these changes make for some pretty toward restoring credibility to the patent question now is how far it will continue In re TC Heartland, the question is which
lively cocktail conversations—for patent trial system.
to swing.
venue provision should prevail in patent

lawyers at least. Here are our thoughts on For some software companies, the deci- cases.
four of the big issues:
sion had serious consequences. They had So Long, East Texas?
Under the current standard, articulated
spent signiicant sums of money assembling by the Federal Circuit in a 1990 decision
Software Patents Under Siege
patent portfolios under pre-Williamson law. Patent trial lawyers around the coun- called VE Holding v. Johnson Gas Appliance,
Now, some are wondering whether that try are intimately familiar with the court-
A movement to rid the patent system investment was worth it.
rooms (and hotels) in the Eastern District
of overly broad software patent claims Their options may be limited. If the soft- of Texas, home to the highest concentration and are
has been steadily gaining momentum in ware patents at issue remain in prosecution, of patent infringement suits. The reason MICHAEL A. JACOBS RICHARD S.J. HUNG
the courts. In a vivid example, the full Fed- the holders may have a chance to rewrite for the district’s popularity, of course, is partners at Morrison & Foerster in San Francisco.
They are co-chairs of the irm’s intellectual property
eral Circuit U.S. Court of Appeals issued a
the claims to satisfy Williamson. They also
simple: Plaintiffs perceive an advantage
litigation practice group.