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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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All Quiet on the Eastern District of Texas Front? (Further Update)

Over four months have passed since the Supreme Court's TC Heartland decision.  New patent case activity in the Eastern District of Texas remains low, as demonstrated by the chart below, which shows the number of new patent cases filed in the Eastern District of Texas each week of 2017:

Since the TC Heartland decision, just over 1800 new patent cases have been filed in district courts throughout the United States.  Below is a chart showing where those cases were filed:


All Quiet on the Eastern District of Texas Front? (Updated)

Three weeks have passed since the Supreme Court's TC Heartland decision.  New patent case activity in the Eastern District of Texas remains low, as demonstrated by the chart below, which shows the number of new patent cases filed in the Eastern District of Texas each week of 2017:

Since the TC Heartland decision, approximately 217 new patent cases have been filed in district courts throughout the United States.  Below is a chart showing where those cases were filed:


All Quiet on the Eastern District of Texas Front?

The U.S. Supreme Court decided TC Heartland on May 22, just over a week ago.  Since that decision, only four new patent cases have been filed in the Eastern District of Texas (all filed last Friday, May 26).  Below is a chart showing the number of new patent cases filed in the Eastern District of Texas each week of 2017:

If fewer cases are being filed in the Eastern District of Texas, where are new patent cases being filed post-TC Heartland?  Last week, 65 new patent cases were filed in district courts throughout the United States.  Below is a chart showing where those cases were filed:


This is a small sample size, but it will be interesting to see how these numbers play out in the coming months.


When Is a Pump Not a Pump?

Skedco, Inc. v. Strategic Operations, Inc. (Fed. Cir. Apr. 24, 2017)

In this case, the Federal Circuit reversed the district court's claim construction requiring that the claimed "pump" and "valve" be physically separate structures in a patent related to a system for simulating trauma with lifelike mannequins.

The claims at issue required "at least one valve in fluid communication with said pump."  The district court construed "valve" as "a device that regulates, directs, or adjusts the flow of fluid through a passageway by opening, closing, or restricting the passageway."  The district court construed "pump" as "a device that moves or transfers fluid by mechanical action."  In deciding summary judgment of non-infringement, the district court held that there was no literal infringement of this claim element because the valves in the accused device were not physically separate from the pump, and instead resided within the pump housing.

The Federal Circuit held that the district court's requirement of a physically separate pump and valve was error.  Looking first to the claims themselves, the court noted that the claims did not require the pump and valve to be physically separate, instead only requiring them to be "in fluid communication," and pointed out that another claim of the patent recited a "pump in fluid communication with [a] reservoir" where the "pump is in a cavity of said reservoir," thereby envisioning one device in fluid communication with another inside of it.  The Federal Circuit also held its construction (allowing for a valve to reside within a pump) was consistent with the district court's constructions of the terms "pump" and "valve":

We see no reason why a device that moves fluid cannot contain another device that regulates flow within it.  A pump does not cease moving fluid--i.e., being a "pump"--just because an internal valve adjust fluid flow.

The defendant argued on appeal that the some of the patent's figures would be rendered nonsensical if the valve were integral to the pump.  The Federal Circuit rejected this argument, stating that "[p]atents do not need to include drawings of particular embodiments in order to claim them" and "a claim is not limited to inventions looking like those in the drawings."  The defendant also relied on Becton, Dickinson & Co. v. Tyco Healthcare Group, LP for the proposition that separately listed claim elements are presumptively distinct, but the Federal Circuit found Becton distinguishable because in that case the constructions themselves required separate structures and Becton "was also premised on the notion that an alternative construction would have rendered the claims nonsensical and would have rendered them obvious over the prior art."  The court found neither of those concerns were present in this case.


Federal Circuit Finds Two Claim Terms Indefinite Under Nautilus

Trusted Knight Corp. v. International Business Machines Corp. (Fed. Cir. Mar. 7, 2017) (nonprecedential)

In this case, the Federal Circuit affirmed a district court decision invalidating three patent claims as indefinite under the Supreme Court's Nautilus decision.  The patent at issue relates to protecting computers against key logging malware.

The first term in dispute was "in response to the software key logging through the API stack to an internet communication port."  The district court held this term indefinite because it is unclear what "in response to the software key logging" requires.  On appeal, the plaintiff argued that this limitation does not require responding to or detecting actual malware on a user's computer.  The Federal Circuit found this argument supported by the patent specification, which states "[t]he solution of the present invention does not depend on detection of malware at all."  In the underlying district court decision, the district court had asked what is happening "in response to the software key logging" if the invention is not responding to malware.  The plaintiff responded to this question during the appeal by arguing that the invention responds to the threat of malware.  The Federal Circuit rejected this argument as the claim limitation does not "refer to the 'threat' or 'potential presence' of key logging; rather it refers to key logging."  The Federal Circuit then held that meaning of this claim term is not reasonably certain and the clams containing this term are therefore indefinite.

The second term in dispute was "a process of passing the encrypted data to a 3-ring level where a hook inserted by a hook-based key logger."  The parties agreed that this claim term contains a typographical error.  Specifically, the term is missing a verb between "hook" and "inserted."  The district court held it could not correct this error because the correction was subject to reasonable debate.  The plaintiff argued that the verb "is" should be inserted between "hook" and "inserted."  But the district court found that the claim could also be corrected by inserting "could be" between "hook" and "inserted."  The Federal Circuit determined that the plaintiff's proposed correction would suggest that the "process of passing the encrypted data to a 3-ring level" only occurs when a hook is actually inserted, but "the specification emphasizes that the invention operates regardless of the presence or detection of malware."  The Federal Circuit then determined that the district court's alternative correction "would seem to be consistent with the specification" but "would create a different claim scope than [plaintiff's] proposed construction of adding 'is.'"  As the proposed correction to the claim was subject to reasonable debate, the Federal Circuit held the claim limitation is not amenable to correction and does not inform those skilled in the art about the scope of the invention with reasonable certainty.  The Federal Circuit thus held the claim indefinite.


Supreme Court to Review Interpretation of Patent Venue Statute

TC Heartland, LLC v. Kraft Foods Group Brands LLC (No. 16-341)

Earlier today, the Supreme Court granted certiorari to determine "[w]hether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions and is not be supplemented by 28 U.S.C. § 1391(c)."

In 1957, the Supreme Court held that "28 U.S.C. § 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)" and that the phrase "where the defendant resides" in Section 1400(b) means the state of incorporation only. Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222, 226, 229 (1957). In 1990, two years after Congress had amended Section 1391(c), the Federal Circuit held that those amendments made Section 1391(c) applicable to Section 1400(b) and therefore defendants in patent litigation could be sued in "any district where there would be personal jurisdiction over the corporate defendant." VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1583 (Fed. Cir. 1990).

Congress further amended Section 1391(c) in 2011. Recently, TC Heartland argued to the Federal Circuit, on a writ of mandamus, that those amendments rendered VE Holding inapplicable such that Fourco again controls the interpretation of Section 1400(b).  The Federal Circuit disagreed, calling the 2011 amendments "minor." 

Reversal of VE Holding could shift the focus of patent litigation away from popular districts like the Eastern District of Texas to districts where more companies are actually incorporated or have a significant physical presence, depending on how the Supreme Court rules in this case.


Federal Circuit Relies on Non-Claim Construction Language in Markman Order in Affirming Summary Judgment of Non-Infringement

Impulse Tech. Ltd. v. Microsoft Corp. (Fed. Cir. Dec. 7, 2016) (nonprecedential)

This case concerned the construction of the term "defined physical space" in a patent directed to the use of three-dimensional motion tracking for interactive fitness and gaming applications. The district court held that the construction of this term is an "indoor or outdoor space having size and/or boundaries known prior to the adaptation of the testing and training system." The district court subsequently granted Microsoft's motion for partial summary judgment of non-infringement based on this claim construction.

On appeal, Impulse argued both that the district court's claim construction was incorrect, and summary judgment of non-infringement should not have been granted under the claim construction adopted by the district court. 

On appeal, Impulse argued that "[e]ach of the accused products has software code that specifies the size of a physical space within which the user can play the game." Impulse then argued that since those hardcoded values are fixed, the "size" of the physical space is known prior to adaptation (i.e. prior to game play), and though the location is not known in advanced, the district court's construction provides that the "size and/orboundaries [are] known prior to the adaptation" so the district court should not have granted summary judgment of non-infringement.

In response, Microsoft pointed to language in the district court's Markman order explaining that the district court adopted the "and/or" phrase in its construction solely to account for the "defined physical space" lacking a vertical boundary, as some of the examples of physical spaces disclosed in the specification were outdoor spaces.

The Federal Circuit agreed with Microsoft and "reject[ed] Impulse's interpretation of the district court's construction that a physical space with eithera known size or a known set of boundaries would constitute a 'defined physical space.'" (emphasis in original). The Federal Circuit explained that "[a]s the district court explained, the 'and/or' phrase in its construction was adopted to 'account for the possibility that an outdoor physical space would have no vertical boundary.'" The Federal Circuit then concluded "that both the size and the location of any boundaries that exist must be known prior to adaptation of the system in order to constitute a 'defined physical space.'"

It is interesting that the Federal Circuit interpreted the scope of the district court's claim construction by relying on other language in the Markman order.  The court could have instead, for example, modified the construction itself to expressly include the idea of "boundaries that exist" for situations where there is no vertical boundary. This is interesting as it is quite possible that, if such a case were to have been presented to a jury, the parties may have been precluded from referencing at trial any language in the Markman order other than the claim constructions themselves.  Thus, a jury may not have had the benefit of the additional language the Federal Circuit referenced in its decision.


Gray on Claims Turns Seven Years Old

This blog started in June 2009.  It is still hard for me to wrap my head around that fact.  Seven years and 185 posts later, it is still here (though a bit dormant I admit).  A lot has happened in the last seven years.  We have seen multiple Supreme Court opinions on claim construction and other patent issues, as well as the rise and fall of false marking cases.  Much has changed, while much remains the same.

I am working on some new content which will be published here soon, including content on the recent Supreme Court decisions in Cuozzo v. Lee and Halo v. Pulse, as well as an update to my November 2009 post entitled "Top 150 'Customers':  Increasing Domination of the Patent System."

To my readers, both old and new, I appreciate you taking time to read what I have to contribute to the conversation, and hope this blog has provided, and will continue to provide, value to each and every one of you.  If there are any specific topics (claim construction or otherwise) you are interested in seeing covered on this blog, please feel free to contact me at


What is "Plain Meaning" Anyway?

Sucampo, AG v. Dr. Reddy's Labs., Inc. (D.N.J. Mar. 4, 2016)

It is common in patent litigation for patent holders to request claim terms be given their "plain meaning" by the Court without further clarification of what that plain meaning is.  But recently, Magistrate Judge Arpert in the District of New Jersey ordered plaintiffs to provide such clarification.

In the litigation, the parties disputed construction of eight claim terms.  The defendants proposed substantive constructions for each of the eight terms, while the plaintiffs offered "plain meaning" as their proposed construction for each term.  Defendants sought relief from the Court, arguing that the plaintiffs' position "prevents the Court from engaging in meaningful claim construction."

Magistrate Judge Arpert determined that the plaintiffs' position "without a statement of Plaintiffs contend the 'plain meaning' to be and without acknowledging whether Defendants' proposed construction is within the scope of Plaintiffs' 'plain meaning' is unhelpful to the process and has the potential to unnecessarily burden the Court's construction efforts."  The Magistrate Judge then held that the plaintiffs must affirmatively take a position on whether the defendants' proposed constructions are within the plaintiffs' "plain meaning" constructions as well as disclose a statement as to what the plaintiffs contendthe plain meaning of each term to be.  The court also noted that the plaintiffs are not precluded from arguing that no construction of a term is necessary and the court's order is intended "to assist the District Judge in resolving claim construction issues."

It will be interesting to see if any other judges start to require parties to disclose what they contend a "plain meaning" construction to be, even if the court may ultimately determine the claim term at issue needs no construction.


USPTO Prepares to Launch "Clarity of the Record" Pilot

In a recent blog post, PTO Director Lee announced that the USPTO is preparing to launch a "Clarity of the Record Pilot."  As part of this pilot "examiners will include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims."  The USPTO plans "to develop best examiner and applicant practices for enhancing the clarity of the record" based on the information learned from the pilot.  The blog post further explains that "[t]hrough correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute."

It is unclear whether Examiners will themselves be defining key terms or providing claim constructions as part of this pilot.  If Examiners will be taking such actions themselves, it is also unclear how the definitions and constructions provided by the Examiners will interplay with the "broadest reasonable construction" framework used during prosecution, 35 U.S.C. 112 P2 and associated case law regarding the onus of the applicant to provide claims particularly pointing out and distinctly claiming the subject matter regarded as the invention, and the process of construing the claims during litigation.