TC Heartland for Foreigners (a.k.a. Foreign Corporations)

• http://www.lexology.com/library/detail.aspx?g=4023eaf4-87e9-4cd6-bd9c-4b0cf54ccfe2

TC Heartland and foreign corporations

The Supreme Court explicitly declined to address the impact of its decision on venue for foreign corporations in patent infringement cases, explaining instead:

The parties dispute the implications of petitioner's argument for foreign corporations. We do not here address that question, nor do we express any opinion on this Court's holding in Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 US 706, 92 S.Ct. 1936, 32 L.Ed.2d 428 (1972) (determining proper venue for foreign corporation under then existing statutory regime).

TC Heartland, 2017 WL 2216934 at *7n.2. In Brunette Machine Works, 406 US at 714, the Supreme Court held that venue in a patent infringement action against a foreign corporation is governed by 28 USC §1391(d) and not §1400(b). The Supreme Court reasoned that §1391(d), which at the time read “[a]n alien may be sued in any district,” is “properly regarded, not as a venue restriction at all, but rather as a declaration of the long-established rule that suits against aliens are wholly outside the operation of all the federal venue laws, general and special.” Id. However, in 2011, §1391 was amended to delete and replace subsections (a)-(d). The parallel portion of the statute, §1391(c)(3), now reads “a defendant not resident in the United States may be sued in any judicial district, and the joinder of such a defendant shall be disregarded in determining where the action may be brought with respect to other defendants.” 28 USC §1391(c)(3). If the Supreme Court maintains the same reasoning as in Brunette, then venue will likely remain appropriate in any judicial district. That was not decided in TC Heartland and will be decided in future cases.

http://scholarship.law.upenn.edu/cgi/viewcontent.cgi?article=3638&context=penn_law_review

http://www.proskauerguide.com/litigation/1/III

https://patentlyo.com/patent/2017/05/supreme-court-reins-patent.html

PTAB - 'Ex Parte Schulhauser' (patentable weight of conditional claim limitations)

https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20Schulhauser%202016_04_28.pdf

Based on the claim limitations as written, the broadest reasonable interpretation of claim 1 encompasses an instance in which the method ends when the alarm is triggered in response to the cardiac signal data not being within the threshold electrocardiac criteria, such that the step of "determining the current activity level of the subject" and the remaining steps need not be reached. In other words, claim 1 as written covers at least two methods, one in which the prerequisite condition for the triggering step is met and one in which the prerequisite condition for the determining step is met. Thus, the broadest reasonable interpretation encompasses a method where only the steps of "collecting physiological data associated with the subject from the implantable device at preset time intervals, wherein the collected data includes real-time electrocardiac signal data, heart sound data, activity level data and tissue perfusion data," "comparing the electrocardiac signal data with a threshold electrocardiac criteria for indicating a strong likelihood of a cardiac event," and "triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria" are performed. 4

The Examiner in this case was able to present a prima facie case of obviousness as to claim 1 by providing evidence to show obviousness of the "collecting," "comparing," and "triggering" steps. The Examiner did not need to present evidence of the obviousness of the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met).

Appellants' arguments that are directed to the failure of the Examiner to demonstrate adequately that the "determining" step and the remaining steps of claim 1 are rendered obvious are not commensurate with the broadest reasonable interpretation of claim 1 and are, therefore, unpersuasive.

Although claim 11 recites functions that are substantially similar to the steps recited in the method of claim 1, as noted supra, claim 11 is directed to a system. The broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur. This interpretation of the system claim differs from the method claim because the structure (i.e., a processor programmed to perform an algorithm for carrying out the recited function should the recited condition be met) is present in the system regardless of whether the condition is met and the function is actually performed. Unlike claim 1, which is written in a manner that does not require all of the steps to be performed should the condition precedent not be met, claim 11 is limited to the structure capable of performing all the recited functions.

In other words, in this case, the system of claim 11 is narrower in scope than the method of claim 1. Thus, in order to show anticipation or obviousness of a claim reciting structure that performs a function tied to a condition precedent, the Examiner must cite prior art that discloses or renders obvious such structure.

https://www.law360.com/articles/884711/what-schulhauser-means-for-conditional-claim-limitations