Civil Procedure Commons^™

Plausible Pleading In Patent Suits: Predicting The Effects Of The Abrogation Of Form 18, Kyle R. Williams

Michigan Telecommunications & Technology Law Review

On December 1, 2015, amendments to the Federal Rules of Civil Procedure took effect. The changes included, among other things, the abrogation of the Appendix of Forms, which contained templates for summons, complaints, answers, and other litigation documents. Prior to its abrogation, Form 18—a template for a “Complaint for Patent Infringement”—was widely utilized by patent plaintiffs in crafting infringement complaints. Form 18 was created during the Conley pleading regime, when conclusory allegations were generally sufficient to survive a motion to dismiss. Accordingly, the sample allegations in Form 18 were conclusory and bare-bones in nature. Under Conley, plaintiffs who followed this …

Joinder Under The Aia: Shifting Non-Practicing Entity Patent Assertions Away From Small Businesses, Xun Liu

Michigan Telecommunications & Technology Law Review

When the America Invents Act ("AIA ") was signed in September 2011, many feared the law might benefit larger corporations at the expense of small businesses. This Note examines how one portion of the AIA, governing joinder in patent cases, might actually benefit small businesses by reducing patent assertions from non-practicing entities ("NPEs"). NPE assertions disproportionately affect small businesses, both because NPEs target small businesses more frequently and because patent assertions have a greater impact on individual companies. Prior to the AIA, joining multiple defendants in a single lawsuit offered important advantages for patent holders and allowed NPEs to achieve …

The Case Against Combating Bittorrent Piracy Through Mass John Doe Copyright Infringement Lawsuits, Sean B. Karunaratne

Michigan Law Review

Today, the most popular peer-to-peer file-sharing medium is the BitTorrent protocol. While BitTorrent itself is not illegal, many of its users unlawfully distribute copyrighted works. Some copyright holders enforce their rights by suing numerous infringing BitTorrent users in a single mass lawsuit. Because the copyright holder initially knows the putative defendants only by their IP addresses, it identifies the defendants anonymously in the complaint as John Does. The copyright holder then seeks a federal court's permission to engage in early discovery for the purpose of learning the identities behind the IP addresses. Once the plaintiff knows the identities of the …

Addressing Default Trends In Patent-Based Section 337 Proceedings In The United States International Trade Commission, John C. Evans

Michigan Law Review

Section 337 of the Tarif Act of 1930 empowers the United States International Trade Commission to investigate imports to ensure imports do not infringe on U.S. trademarks. The Commission permits patent, copyright, and trademark owners to notify the Commission of possibly infringing imports and to obtain exclusion orders that prevent importation of products that infringe their intellectual property. The total number of investigations increased from 1996 to 2005, yet the proportion of respondent defaults rose as well. The increase in defaults suggests there is some systemic difficulty in ensuring full participation. This Note argues that the res judicata effects of …

Swallowing The Apple Whole: Improper Patent Use By Local Rule, Ellisen S. Turner

Michigan Law Review

During patent infringement litigation, the Federal Rules of Civil Procedure ("FRCP") and the federal district court's local rules govern the parties' pretrial discovery and motion practice. The U.S. District Court for the Northern District of California has adopted the most comprehensive local rules to date covering pretrial procedures in the patent litigation context. The Northern District of California Patent Local Rules ("Local Rules") may come to have a significant impact throughout the federal courts, as it appears that other jurisdictions and commentators are looking to the Local Rules for guidance. For instance, the American Bar Association Section of Intellectual Property …

A Proposal To View Patent Claim Nonobviousness From The Policy Perspective Of Federal Rule Of Civil Procedure 52(A), Bradley G. Lane

University of Michigan Journal of Law Reform

This Note analyzes the scope of appellate review that should be accorded to a trial judge's determination of nonobviousness. Part I details the condition of nonobviousness and how it has evolved into the principal obstacle to patentability. Part II analyzes the Supreme Court and appellate precedents on the scope of review on this issue. Part III evaluates the policy underpinnings of Rule 52(a) and applies a two-pronged analysis to the nonobviousness requirement to determine whether the clearly erroneous standard of review is appropriate. This Note concludes that the treatment of the nonobviousness determination as a question of law cannot be …

Federal Civil Procedure-Venue-Effect Of 1948 Judicial Code Definition Of Corporate Residence On Venue Under The Jones Act, Mary Mandana Long

Michigan Law Review

Plaintiff seaman, having been injured while serving on a vessel owned and operated by the defendant corporations, brought a civil action in federal district court alleging claims for negligence under the Jones Act, for unseaworthiness, and for maintenance and cure. The venue provision of the Jones Act requires that actions under it be brought in the district in which the defendant employer resides or in which his principal office is located. Plaintiff filed his complaint in the Western District of Pennsylvania although defendants were incorporated and maintained their principal offices in Louisiana. Defendants' motions to dismiss on the ground of …

Federal Procedure - Venue - Application Of Special Venue Provision To Change Of Venue In Patent Infringement Action, Dean L. Berry S.Ed.

Michigan Law Review

Petitioner brought a patent infringement action in the northern district of Texas, wherein the alleged infringement occurred and the named defendants resided and had a regular place of business. On motion by the named defendants under 28 U.S.C. §1404(a), authorizing the transfer of certain actions to a district in which the action "might have been brought," the court ordered transfer to the northern district of Illinois where litigation on the same patent was already in progress between the plaintiff and other alleged infringers. Petitioner's motion for mandamus to require the Texas district court to set aside this transfer order was …

Federal Procedure-Mandamus-Use To Prevent Change Of Venue, Richard J. Darger S. Ed.

Michigan Law Review

Petitioners instituted a suit in the District Court for the Southern District of California seeking damages for alleged patent infringement. That court ordered the case transferred to the District Court for the District of Delaware on the ground that venue was not properly laid in the Southern District of California. Then petition was made to the Court of Appeals for the Ninth Circuit for mandamus to compel the judge of the lower court to withdraw the order of transfer. Held: petition denied. Mandamus will issue to prevent a transfer of a case to the district court of another circuit …

Federal Practice -Venue - Plaintiff's Privilege In Respect To Defendant's Counterclaim On An Unrelated Patent

Michigan Law Review

Petitioners brought suit in the federal court for the northern district of Ohio against defendant corporations having regular and established places of business in that district and against two individual defendants resident there alleging infringement of patent rights and asking for injunction, damages, and an accounting. Defendants' answer denied infringement and set up a counterclaim based on a patent granted one of the defendants praying for an injunction against infringement and an accounting. Defendants' counterclaim did not allege that petitioners were inhabitants of the district where the counterclaim was to be tried or that they had regular and established places …

Patents - Right To Personal Service In Contempt Proceedings

Michigan Law Review

Complainant obtained in the district court of Massachusetts a final injunction against the manufacture and sale of a device by defendant, a Michigan corporation. In a subsequent term of court, complainant brought contempt proceedings for an alleged violation of the injunction. Copies of the petition, motion, and order to show cause were sent by registered mail to the defendant's place of business. Objection to the jurisdiction of the court was raised upon the ground that the term in which the injunction had issued had expired and the decree, as to compensation, had been satisfied; hence personal service as in a …

Contempt-Punishment Of One Not A Party To An Injunction

Michigan Law Review

The plaintiff sued A and B for infringement of patent rights. The suit was dismissed as to A and B testified that the business was solely his. A decree was then entered against B, "his agents, employees, associates and confederates * * *," which enjoined them from "infringing, or aiding or abetting, or in any way contributing to the infringement * * *" of the patents. When the decree was entered, A was an employee of B, but subsequently A left B's employ, began his own business, and infringed the patent. The plaintiff began contempt proceedings against A in the …

Patent Law, John Barker Waite

Books

The comparatively small size of the book is not due to any conscious superficiality of treatment nor omission of pertinent subject matter. It purports to cover only the substantive law of patents, their nature, validity, effect, and their characteristics as property. Matters of procedure in securing patents or suing on them, and the difficult subject of the amount of compensation recoverable by suit, would require a volume for themselves and are not included here. But of the matter which is included, it has been my desire to present every issue which has come before the courts....

This book is intended …

Note And Comment, Ralph W. Aigler, Robert L. Mayall, Sidney E. Doyle, Burke W. Shartel

Michigan Law Review

The Character of User In Prescription - As the possession of the claimant in a case of adverse possession must be shown to have been adverse in order to ripen into title, so also must the user in prescription be shown to have been adverse during -the endure prescriptive period. As to the burden of proving the adverse character of the possession in the first case there seems to be doubt whether there is a presumption of adverseness by showing open possession and acts of ownership, or whether there is a burden upon the claimant to go further. See 2 …

Note And Comment, Michigan Law Review

Michigan Law Review

Constitutional Law--Compelling one to be a Witness Against Himself--Comparing Defendant's Shoe with Footprints; Rights in Inventions as Between Employer and Employee; Constitutional Law--Power of Legislature to Prescribe Rules of Evidence--Making Conveyance by Person Indebted Prima Facie Evidence of Intent to Defraud Creditors; Decorum of Attorney in Argument--Propriety of Appeals to the Pathetic or Sentimental; Liability of United States for Injury from Elevator in its Public Buildings--Implied Contract to Operate Safely--Case "Sounding in Tort"; Statutes Regulating the Practice of Medicine--Osteopathy; Precedents

Sarony V. Burrow-Giles Lithographic Co., Henry W. Rogers

Articles

Commenting in the Federal Reporter on this Opinion, Professor Rogers considers at length this case bearing on definitions of copyright and artistic properties. "This was an action at law for the violation of the plaintiff's copyright of a photograph of Oscar Wilde, which the defendant had copied by the process known as chromo-lithography.... A jury was waived, and the case was argued upon questions of law only, which appear in the opinion."

"The contention of the defendant, briefly stated, is this: That there was no constitutional warrant for this act; that a photographer is not an author, and a photograph …