Intellectual Property Owners Association

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2015 Board Resolutions

Adopted December 8, 2015

[Supporting Legislation on Foreign Filing Licenses in Design Patents]  RESOLVED, that IPO supports, in principle, legislation to allow applicants to file applications for design protection (e.g., design patents, industrial design registrations) in a country outside of the United States without first obtaining a foreign filing license from the U.S. Patent and Trademark Office.

Adopted September 27, 2015

[Supporting Legislation to Establish a Federal Civil Cause of Action for Trade Secret Misappropriation] — RESOLVED, that IPO supports the enactment of legislation, such as the Defend Trade Secrets Act of 2015, to establish a federal civil cause of action for trade secret misappropriation to protect trade secrets from domestic and foreign theft, including an ex parte seizure provision, while providing adequate safeguards against improper use of such ex parte seizure provision.

[Venue in Patent Suits]RESOLVED, that IPO confirms its support for legislation to limit venue in patent suits in order to curb forum shopping by patent owners and, specifically, IPO supports an amendment to 28 U.S.C. § 1400(b) to limit venue to a judicial district as follows:

(A) In a patent infringement action brought by a patent owner against an accused infringing defendant, venue should be limited to a judicial district:

  1. where the defendant has its principal place of business or is incorporated, or if the defendant is an individual, where the defendant resides;
  2. where the defendant has committed acts of infringement and has a regular and established physical facility where defendant’s acts of infringement have occurred;
  3. where technological activities relating to the invention that led to the application for the patent(s)-in-suit – such as inventing, substantial research and development, or manufacturing – have taken place;
  4. where a plaintiff or a subsidiary has a regular place of business, not operated primarily for the purpose of creating venue, that is engaged in substantial: (a) management of research and development or manufacturing activities for a product or process related to the patent or patents in dispute; (b) research and development of a product or process related to the patent(s) in dispute; or (c) manufacturing activities of a product or process related to the patent(s) in dispute;
  5. where the defendant has agreed or consented to be sued in the instant action; or
  6. where, for foreign defendants that do not meet any of the above, venue would be proper according to 28 U.S.C. § 1391(c)(3).

(B) In a declaratory judgment action brought against a patent owner, venue should be determined according to 28 U.S.C. § 1391.

(C) In considering a motion to transfer venue involving a retailer that sells consumer products alleged to infringe the patent(s)-in-suit, the location of such retail sales should be afforded no weight in deciding the transfer motion if they occur in all of the judicial districts under consideration.

[Stays of Discovery in Patent Suits Prior to Resolution of Preliminary Motions]RESOLVED, that IPO supports, in principle, legislation staying discovery during the pendency of motions to transfer under 1404(a) of title 28 in accordance with the following language:

In an action for patent infringement under section 271 or an action for a declaratory judgment that a patent is invalid or not infringed, if a defendant moves to transfer the action under 1404(a) of title 28 on or before the date by which the defendant must, under Federal Rule of Civil Procedure 12, answer or otherwise respond to the complaint, then as between the plaintiff and the part(ies) filing the motion to transfer:

(A) Until resolution of the transfer motion, absent an agreement from the parties otherwise:

(i) no substantive motion may be decided except (a) motions for injunctive relief, and (b) case-dispositive motions; and

(ii) discovery must be stayed, except such discovery that the court in its discretion determines necessary to decide the transfer motion or motions for injunctive relief.

(B) EXCHANGE OF CONTENTIONS – Nothing in this section shall prohibit a court from ordering, or local rules from requiring, the exchange of contentions regarding infringement, non-infringement, invalidity, or other issues, by interrogatories or other written initial disclosures, at an appropriate time determined by the court.

Adopted June 9, 2015

[Opposing Use of Post-Grant Proceedings to Manipulate the Market]RESOLVED, that IPO believes it is an abuse to file AIA petitions for post grant proceedings by persons who have a significant bet against, or short, of the shares of the patent owners owning the patents challenged in the petitions; now, therefore, IPO urges the United States Patent and Trademark Office to use its discretion to deny petitions filed by such persons.

[Supporting Amendment of 18 U.S.C. §2320]RESOLVED, that IPO supports amending 18 U.S.C. §2320 to expressly include in the definition of a counterfeit mark instances where false goods are used in genuine packaging, product identifiers have been remarked and materially altered on either goods or packaging, or where goods have been materially altered, even if the trademark was initially affixed by the brand owner.

Adopted March 11, 2015

[Supporting Customer Stay Legislation] — RESOLVED, that IPO supports, in principle, legislation to stay a patent case against a customer of a product while a case on the same patent proceeds against the manufacturer of that product on issues common to the customer, provided that:

1.  The statutory stay requires consent of both the manufacturer and customer.

2.  The statutory stay must be sought early in the case.

3.  The statutory stay requires the customer to be bound by the resolution of issues in common with the manufacturer (with limited exceptions when justice so requires).

4.  The statutory stay is based on readily discernible criteria.

 5The statutory stay is limited to retailers, end users or other customers accused of infringement for selling, using or incorporating for sale a product or process, supplied by the manufacturer, that they have not materially modified.

  6.  The statutory stay does not preclude a patent owner from seeking damages or other relief directly from the customer, once the stay is lifted, if such relief would have been available if the case were not stayed.

  7.  The statutory stay does not preclude a court from exercising its discretion to decide whether and to what extent a stay is warranted beyond what is provided in the statutory stay.

[Pleading Standard for Patent Infringement] — RESOLVED, IPO supports patent pleading requirements consistent with the legal standards for other federal pleadings as provided under the Twombly and Iqbal decisions and their progeny, and

RESOLVED, IPO supports efforts of district courts and the Judicial Conference to provide clarity for patent pleading requirements by including at least the following: (1) an identification of at least one claim that is infringed, (2) a statement explaining such infringement, and (3) a statement addressing indirect infringement, if alleged.

[Rules of Civil Procedure in Patent Cases] — RESOLVED, IPO supports amendments to the Federal Rules of Civil Procedure adopted by the Judicial Conference that go into effect on December 1, 2015.

Adopted January 25, 2015

[Identification of Interested Parties in Litigation]RESOLVED, IPO does not support modification of initial disclosure rules to require disclosure of licensees, or those with financial or control interests in asserted patents or patent owners, beyond disclosures necessary to establish litigation standing and real parties in interest. Such non-ownership disclosures are better handled in discovery under appropriate protective orders and in accordance with Rule 26 of the Federal Rules of Civil Procedure. Patent ownership and real party in interest disclosures are already required by the Federal Rules of Civil Procedure such as Rules 7.1(a)(1), 17 and 26(a).