Category Archives:Intellectual Property

Patent Infringement Lawsuit Transferred away from Eastern District of Texas

Recently, a patent infringement lawsuit filed in the Eastern District of Texas was transferred to the Northern District of Texas.[1] While this news may seem hardly ground-breaking, this may signal that courts are becoming more willing to transfer patent infringement cases away from the Eastern District of Texas. A previous blog article illuminated the current dispute in patent law regarding the proper venue in which infringement lawsuits can be filed. The Supreme Court is currently hearing the case of TC Heartland LLC v. Kraft Food Brands Group LLC, which is likely to decide the proper interpretation of the patent venue statute, 28 U.S.C. § 1400(b). The underlying debate focuses on complaints that patent infringement Plaintiffs engage in “forum shopping” by overwhelmingly choosing to file lawsuits in the Eastern District of Texas, which has long been considered a patent Plaintiff friendly court. The Supreme Court heard oral argument for this case on March 27, 2017.[2] Thus, a ruling is expected within the next several months.

Although the Eastern District of Texas in Securityprofiling, LLC did not mention the TC Heartland LLC case, this case was transferred to the Northern District of Texas despite the fact that there was a total of two pending cases between the parties in the Eastern District of Texas and that Plaintiff’s principal place of business is currently located within the Eastern District of Texas.[3] The ruling in Securityprofiling, LLC begs the question of whether more courts will be willing to transfer cases from the Eastern District of Texas while a ruling from the Supreme Court in TC Heartland LLC remains pending. Our firm will be monitoring the status of the Supreme Court’s ruling in TC Heartland LLC and its potential impact. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Securityprofiling, LLC v. Trend Micro America, Inc. et. al., No. 16-CV-1165-RWS-JDL at Docket Entry No. 62 (E.D. Tex. May 12, 2017).
[2] http://www.scotusblog.com/case-files/cases/tc-heartland-llc-v-kraft-foods-group-brands-llc/
[3] See, Securityprofiling, LLC, No. No. 16-CV-1165-RWS-JDL at Docket Entry No. 62.

Michael Santucci Named Parliamentary Chair of the Thomas W. McCormick Scholarship Fund

Last month, with a smile, I accepted an offer from Nuccia McCormick to become the Parliamentary Chairperson of the Thomas W. McCormick Scholarship Fund.  The Fund is a Florida Not-For-Profit (501(c)(3)) Organization that was named after the late Thomas W. McCormick who was a highly-successful engineer and civic leader. He was a decorated captain in the U.S. Army Corps of Engineers and a U.S. Ranger in France, Germany and Vietnam. His efforts serving our country in combat earned him a Bronze Star.

The Thomas W. McCormick Scholarship Fund provided scholarships and “study abroad” opportunities to a dozen students last year.  At our summer “Meet-and-Greet” this week, we announced our goal of fifteen (15) scholarships for the year 2017.  The guest list included Gina Hoff, Mercedes Loy, Mathew Rocco, Marietta Glazer, executives from Broward College and its language school Lingua as well as Nova Southeastern University and various members of the McCormick family. The organization supports education, foreign language, cultural diversity and international diplomacy.  The Fund’s partners include the City of Fort Lauderdale, the Miami German Consulate General and the Miami Consulate Generale D’Italia.

While my wife and I have been consistent donors and participants in the Scholarship Fund in the past, this is my first active position.  The law firm of Santucci Priore, P.L. and I have taken pride in mentoring students throughout the years from high school to undergraduate to law school and thereafter through various internships and mentoring programs, some formal, some informal.  I hope to bring this experience and new energy and ideas to the Fund and ask that my friends and colleagues join me and do the same.  The Scholarship Fund really makes a difference in young people’s lives, and the events are a whole lot of fun.

For anyone interested in making a donation to the Thomas W. McCormick Scholarship Fund, or in applying for a scholarship, please visit: www.twmccormick.org or contact me personally at the law firm of Santucci Priore, P.L.

Patent infringement lawsuit brought against Uber by competitor

Recently, a patent infringement lawsuit was brought against Uber Technologies, Inc. (“Uber”) by a competing ride-sharing company named Hailo Technologies, LLC d/b/a Bring (“Plaintiff”).[1] The Plaintiff describes itself as a company that develops software intended to service ride-hailing customers interested in bringing their biking equipment when traveling.[2] The Plaintiff alleges that it owns a patent registration for a computer based method/system of calling and dispatching drivers, which enables a user to select a particular Taxi or vehicular transport company from a menu, along with the desired destination and number of passengers traveling.[3] The Plaintiff’s patent was issued as U.S. Patent No. 5,973,619 in October 1999.[4]

The Plaintiff alleges that Uber’s mobile application infringes upon its patented invention.[5] Infringement is determined by looking at the claims of the patent and performing a direct comparison between each element and the accused device. Thus, a comparison will need to be made between elements stated in the claims of the Plaintiff’s patent and elements of Uber’s mobile application. Often, the court must step in and settle disputes over the definition of claim terms prior to the claim being compared to the accused device. Usually this is done in what is called a Markham hearing in which both parties submit their proposed interpretation of the scope of the claim or claims in the subject patent. The court will then rule on how several terms in the subject patent are defined. Next, the jury or the court will determine whether infringement has occurred.

This case is currently in its early stages and we will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Hailo Tech., LLC d/b/a Bring v. Uber Tech., Inc., No. 17-cv-03028 at Docket Entry No. 10 (C.D. Cal. April 24, 2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id.