Troutman Sanders LLP: Patent Reform's Impact on Virginia: Venue, Multi-Defendant Litigation and False Marking

Troutman Sanders LLP: Patent Reform's Impact on Virginia: Venue, Multi-Defendant Litigation and False Marking

By Dabney Carr

Some of our colleagues have produced a concise summary of the most significant aspects of the Leahy-Smith America Invents Act (AIA), which can be found here. In advance of the legislation's expected enactment by the President, we'd like to highlight a few provisions that will directly impact patent litigation in Virginia:

Venue

As we blogged here way back in 2009, Section 9 of the AIA moves venue for civil actions appealing various decisions of the PTO, BPAI and TTAB from the District Court in Washington, D.C. to the Eastern District of Virginia. Such actions include civil actions appealing decisions by the BPAI relating to patent rejections (35 USC 145) and interferences (35 USC 146), civil actions appealing decisions by the PTO relating to patent term adjustments (35 USC 154(b)(4)(A)), civil actions appealing decisions of the TTAB relating to registration of a trademark (15 USC 1071(b)(4)), and civil actions appealing suspensions or exclusions from practice before the PTO (35 USC 32). The change applies to any civil action commenced on or after the enactment of the AIA.

Multi-Defendant Litigation

We've noted  the increased frequency of patent litigation involving large groups of defendants on several occasions. Section 19 of the AIA addresses these cases by severely limiting joinder of defendants in patent litigation. Plaintiffs filing suit after enactment of the AIA can join multiple accused infringers only if the defendants are jointly or severally liable or liable in the alternative for infringement arising out of the same transaction, occurrence or series of transactions or occurrences. The claims must also involve questions of fact common to all defendants, and so common issues of claim construction will presumably be insufficient. In addition, the AIA specifically provides that an allegation that each defendant has infringed the same patent is insufficient for joinder

False Marking

Virginia has not been a hotbed of false marking cases, but many such cases have been brought here. Section 16 of the AIA effectively ends the practice of bringing qui tam false marking cases by restricting the award of statutory damages to the United States. A plaintiff can still recover compensatory damages for actual competitive injury, but the AIA provides that the marking of a product with an expired patent that covered the product does not constitute false marking. The false marking provisions of the AIA apply to all suits pending at the time of enactment.

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Virginia IP Law

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