Strategies for Addressing Patent Venue Issues

  • Registration Closed

Patent venue issues continue to be the subject of much interest ‒ and litigation. This webinar will look at important Federal Circuit decisions since TC Heartland regarding venue. The panel will also give tactical tips regarding still open questions — and common battles in district courts.

Most recently, earlier this month, the Federal Circuit refused to rehear en banc Google’s petition for a writ of mandamus that contested a decision in the Eastern District of Texas that had found venue based upon the fact that Google servers are housed in third-party facilities in the district.  The dissenting opinion stated, however, that there is “growing uncertainty among district courts and litigants as to the requirements of § 1400(b) when conducting business virtually through servers and similar equipment...”

Our panel will not only review recent cases, but will provide insights on strategies to address venue issues.  It includes an in-house counsel who has overseen a lengthy venue fight, a litigator who won a Federal Circuit case creating new law on venue, and an expert on Federal Circuit practice and policy.  Among the subjects they will discuss are:

  • Considerations for defendants when weighing the risks of a potentially unfriendly venue vs. the cost of challenging venue
  • Conflicting district court fact-­intensive decisions over the § 1400(b) “regular and established place of business” inquiry
  • How best to approach open issues such as waiver and time period in determining venue


Speakers:  

  • John Dragseth, Fish & Richardson, P.C.
  • Eileen Hunter, 3M Innovative Properties Co.
  • Charlie McMahon, McDermott Will & Emery

Jack Brennan

Fish & Richardson, P.C.

Jack Brennan is a principal in the New York office of Fish & Richardson P.C.  His practice emphasizes patent prosecution, opinions, due diligence, and client counseling in the fields of biotechnology and pharmaceuticals.  Several years ago, Jack successfully challenged the way the U.S. Patent and Trademark Office calculates Patent Term Adjustment for patents resulting from national stage filings under 35 U.S.C. 371.  He holds a Ph.D. in genetics.

Eileen Hunter

3M Innovative Properties Co.

is Senior IP Counsel at 3M. She manages IP disputes globally, which include patent litigation venue disputes within the U.S. She also serves on 3M’s Global Trade Secret Protection Program task force. Eileen was a Partner at Faegre Baker Daniels and clerked for the Eighth Circuit Court of Appeals. She is a vice chair of IPO’s Litigation Committee.

Charlie McMahon

McDermott Will & Emery

is a Partner at McDermott Will & Emery. His practice focuses on IP litigation. He successfully convinced the Federal Circuit to vacate an Eastern District of Texas ruling that ZTE, which had had contracted with a call center in Plano, Texas, could be sued in the district. In that case, the Federal Circuit clarified that, upon motion by the defendant challenging venue in a patent case, the plaintiff bore the burden of establishing proper venue.

Key:

Complete
Failed
Available
Locked
Strategies for Addressing Patent Venue Issues
02/28/2019 at 2:00 PM (EST)   |  60 minutes
02/28/2019 at 2:00 PM (EST)   |  60 minutes
CLE Credit
4 Questions
4 Questions CLE credit will be available for registered attendees only. If you would like CLE credit for this webinar, please complete the following questions. IPO will apply for CLE for all live programs in the majority of the states that require CLE. IPO will not be applying for CLE in the states of Florida, Ohio, South Carolina, West Virginia, or Texas (attorneys in TX may submit up to 5 hours of self-study credit). Once IPO has received approval from the state(s) CLE boards , certificate(s) of attendance will be available for download from your dashboard.
Survey
8 Questions
CA Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available California has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the "claim credits" and then "view/print your certificate" for your records.
DE Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available Delaware has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the "claim credits" and then "view/print your certificate" for your records.
IL Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available Illinois has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the "claim credits" and then "view/print your certificate" for your records.
MN Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available Minnesota has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the "claim credits" and then "view/print your certificate" for your records.
NJ Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available New Jersey has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the "claim credits" and then "view/print your certificate" for your records.
NY Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available This course was approved in Virginia, a NY approved jurisdiction, for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the “claim credits” and then “view/print your certificate” for your records.
PA Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available Pennsylvania has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the "claim credits" and then "view/print your certificate" for your records.
VA Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available Virginia has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the "claim credits" and then "view/print your certificate" for your records.
WA Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available Washington has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the "claim credits" and then "view/print your certificate" for your records.
WI Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available Wisconsin has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the "claim credits" and then "view/print your certificate" for your records.