CincyIP Newsletter
April 2017
Welcome to the CincyIP Newsletter, your one-stop summary for intellectual property news and events in Cincinnati!

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Upcoming Events:
May 1 - In re Tam: LIVE AND IN PERSON

CincyIP will be hosting an exclusive event and CLE Monday, May 1st,  featuring Simon Tam of The Slants at Arnold's Bar and Grill from 4:00 PM to 5:15 PM with a special live acoustic show afterwards starting at 5:15 PM.

Ken Germain  of Wood Herron & Evans will begin with an introduction to "matter which may disparage . . . persons . . . [or]  institutions" in trademarks and the legal background of the case up to this point.

Next, Simon Tam from The Slants will discuss his experience with the IP legal system, from the TTAB to the Federal Circuit, and now on to the Supreme Court.

The CLE will conclude with a panel discussion by Lori Krafte (Wood Herron & Evans), Karen Gaunt (Dinsmore), and Prof. Tim Armstrong (University of Cincinnati College of Law) about the 1st Amendment issues, trademark concerns, and future implications that this case brings.

At the close of the CLE, Simon will play a LIVE acoustic set feat. music from his band, The Slants.

Don't miss this once in a lifetime event!

WHEN: Monday, May 1st, 2017
WHERE: Arnold's Bar and Grill - Courtyard
CLE: 1.0 Credit Hour

Listen to The Slants for free via their website HERE.
Read the Federal Circuit's decision HERE.
May 9 - CincyBio 2017

Sponsorship Spots Still Available!
Register by April 21 for Early Bird Rate!

CincyIP is proud to present CincyBio for 2017, our premier conference dedicated to the biosciences and related intellectual property issues.  CincyBio is meant not only for attorneys, but also for the innovators, entrepreneurs, and businesses that work tirelessly to bring their ideas and inventions to life.

Speakers at CincyBio 2017 will cover topics including:
  • Ohio's medical marijuana bill and legal trends in the cannabis industry; 
  • Cyber security in the health care industry;
  • The newly passed 21st Century Cures Act and its effects on the approval of new drugs;
  • Patent eligibility, validity, and infringement of method claims;
  • "Written description" issues under 35 U.S.C. § 112 relating to biomolecules; and
  • Post-Therasense review of inequitable conduct and duty of disclosure.
WHEN: Tuesday, May 9, 2017
WHERE: JACK Cincinnati Casino
CLE: 6.0 hours applied for in OH, KY, and IN

REGISTER HERE  (early bird rate ends April 21 )

For more information, visit our  CincyBio 2017 page.
Recent Legal News:
Supreme Court to Decide Important Patent Venue Issues: TC Heartland LLC v. Kraft Foods Group Brands LLC

In what Law360 refers to as "what many are calling the most important patent case of the year," the Supreme Court heard arguments on Monday, March 27th in TC Heartland LLC v. Kraft Foods Group Brands LLC. This case concerns the interpretation of the patent venue statute, 28 U.S.C. § 1400(b). TC Heartland urged the Supreme Court to overturn Federal Circuit precedence and narrow where patent cases may be brought to prevent forum shopping. Kraft argued that the plain language of the statute is clear and controlling, and that policy concerns are more aptly addressed by Congress.
The patent venue statue, 28 U.S.C. § 1400(b), provides that venue is appropriate either "in the judicial district where the defendant resides," or "where the defendant has committed acts of infringement and has a regular and established place of business." However, the provision does not define the term "resides." The general venue statute governing civil actions, 28 U.S.C. § 1391(c), does provide a definition, and states that a corporation resides in "any judicial district in which it is subject to personal jurisdiction."
 The Federal Circuit and Congress have both seemingly addressed this issue, however, according to TC Heartland, their decisions appear to contradict a 1957 Supreme Court case.
In 1990, the Federal Circuit concluded in VE Holding Corp. v. Johnson Gas Appliance that Congress clearly intended for § 1391(c) to apply to § 1400(b), as both are located in the same chapter of Title 28 (Chapter 87). Congress appeared to agree with the Federal Circuit, enacting the Jurisdiction and Venue Clarification Act of 2011, which replaced the phrase "[f]or purposes of venue under this chapter..." with "[f]or all venue purposes," and introduced a new provision, § 1391(a), "Applicability of section," which states, in relevant part, that "[e]xcept as otherwise provided by law -- (1) this section shall govern the venue of all civil actions brought in district courts of the United States[.]" TC Heartland argues that this interpretation directly conflicts with the Supreme Court's holding in Fourco, a 1957 case that held "28 U.S.C. 1400(b), 28 U.S.C.A. § 1400(b) is the sole and exclusive provision controlling venue in patent infringement actions, and that it is not to be supplemented by the provisions of 28 U.S.C. 1391(c), 28 U.S.C.A. § 1391(c)." ( Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 229 (1957)).

While Justice Ginsburg noted the exceptionally narrow holding of this case, which only focused on the state of incorporation and not other factors, such as the headquarters of a corporation, Justice Kagan stated, "for 30 years the Federal Circuit has been ignoring our decision, and the law has effectively been otherwise...When 30 years of practice goes against you, what happens?" Although the Federal Circuit and the Supreme Court often fail to see eye-to-eye on patent-related matters, it seems that Congress has also placed a thumb on the scale in support the Federal Circuit's interpretation to further complicate the issue. Stay tuned to see what the Court decides in this undoubtedly influential case.

TC Heartland is represented by James Dabney of Hughes Hubbard & Reed LLP (argued the case), and is also represented by John Duffy, Richard Koehl and Emma Baratta of Hughes Hubbard & Reed LLP.

Kraft Foods is represented by William Jay of Goodwin Proctor LLP (argued the case), and is also represented by Brian Burgess of Goodwin Proctor LLP,  John Luken, Josh Lorentz, and Oleg Khariton of Dinsmore & Shohl LLP, and Michael P. Abate of Kaplan & Partners LLP

The Federal Circuit's decision may be found HERE.
Legal Perspective:
A new hope for inventors? Emerging liberalization of subject matter eligibility in Trading Technologies v. CQG

In January, the Federal Circuit affirmed the lower court's holding in Trading Technologies International, Inc. v. CGQ, Inc. that the asserted patent claims covering software relating to improved graphical user interfaces for electronic stock labeling were indeed patent eligible subject matter.
The implications of this decision in light of Alice v. CLS Bank are discussed in a recent article written by Doug Gastright and William Morriss of Frost Brown Todd.
The full article may be found HERE.
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