All posts by Amaris Gyebi

Venue Trends for Patent Litigation After TC Heartland

On May 22, 2017, the Supreme Court of the United States uprooted decades of precedent through its decision in TC Heartland v. Kraft Foods Group Brand, 137 S. Ct. 1514 (2017). Prior to TC Heartland, personal jurisdiction was enough to establish venue under 35 U.S.C. §1400(b), which gave plaintiffs the option to sue a defendant in any district where it sold an allegedly infringing product. Thus, the plaintiff could sue a defendant in the plaintiff’s own “backyard” by simply ordering a product online and having it shipped to their home state. However, in one fell swoop, the Supreme Court has now essentially required the plaintiff to go to the defendant. Following the decision in TC Heartland, a domestic corporation may now only be sued in either the state where it is incorporated or a state where it has committed acts of infringement and has a regular and established place of business. This decision struck a blow to plaintiffs by limiting the places where a defendant could be sued. However, a year has passed since the decision and plaintiffs have not given up hope in their attempts to circumvent the rule.

Post TC Heartland, issues regarding the applicability of pendent venue have been on the rise. Pendent venue allows a court to exercise, otherwise improper, venue over a claim where venue is proper over other claims, in the interest of judicial efficiency. Thus, plaintiffs have resorted to stacking their complaints with claims in which the court does have proper venue, in order to argue that the court should exercise pendent venue and retain jurisdiction over the patent infringement claims in the name of saving judicial time and resources. Courts, however, have consistently rejected this argument, finding, the Supreme Court’s decision in TC Heartland, prescribing the circumstances under which a defendant can be brought into court, cannot be supplanted by the exercise of pendent venue. See Jenny Yoo Collection, Inc. v. Watters Design Inc., 2017 WL 4997838 (S.D.N.Y. Oct. 20, 2017); Wet Sounds, Inc. v. Powerbass USA, Inc., 2018 WL 1811354 (S.D. Tex. Apr. 17, 2018); Olivia Garden, Inc. v. Stance Beauty Labs, L.L.C., 2018 WL 3392063 at *3 (N.D. Cal. 2018).

Plaintiffs have also attempted to base venue on the operations of related entities, specifically a defendant’s corporate affiliates. In these situations, the plaintiff may name both the parent and subsidiary company in its suit because one of the two is incorporated in the plaintiff’s home state. The plaintiff then asserts that the agency relationship between the two is sufficient for the court to retain jurisdiction over both so long as venue is proper over one. This approach however has similarly been met with no success, with courts consistently holding that after TC Heartland, for a regular and established place of business of a subsidiary to be imputed to a corporate relative, there must be a lack of corporate separateness. See Soverain IP, LLC v. AT&T, Inc., 2017 WL 6452802 (E.D. Tex. 2017); Symbology Innovations, LLC v. Lego Systems, Inc., 2017 WL 4324841 (E.D. Va. Sept. 28, 2017).

Nevertheless, there may be some light at the end of this tunnel for plaintiffs. A line of cases from the district of Delaware have suggested that venue may be proper where it is based on the presence and activities of a corporate family. See Bristol-Myers Squibb Company v. Mylan Pharmaceuticals, Inc., 2017 WL 3980155 (D. Del. Sept. 11, 2017); UCB, Inc v. Mylan Technologies, Inc., 2017 WL 5985559 (D. Del. December 1, 2017); Mallinckrodt IP v. B. Braun Medical Inc., 2017 WL 6383610 (Dec. 14, 2017). A corporate family is a group of corporations consisting of a parent corporation and all of its subsidiaries, in which the parent corporation owns directly or indirectly a one hundred percent interest. Allowing venue to be based on the presence and activities of a corporate family builds off of the Federal Circuit’s holding in Minnesota Mining & Manufacturing Co. v. Eco Chemicals, Inc., in which the court held that venue in patent infringement case may be proper with regard to one corporation by virtue of the acts of another, intimately connected, corporation. 757 F.2d 1256 (Fed. Cir. 1985). These cases give rise to question of whether the corporate veil must be pierced in order to impute venue onto a corporate affiliate, or whether venue can be proper simply because the entity is a part of a corporate family that is present and active in the plaintiff’s choice of judicial forum. At least one court has rejected this approach, explaining that while the Supreme Court did not address circumstances in which companies residing in various states are affiliated corporate entities, its broad unqualified language in TC Heartland precludes finding venue is appropriate simply because the plaintiff’s complaint cannot be filed in one judicial district and the defendant is a corporate family. See Tower Laboratories, Ltd. V. Lush Cosmetics Limited, 285 F.Supp.3d 321, 324 (D.D.C. 2018). Considering the district discord, this issue will likely make its way to the Federal Circuit by next year.

* Amaris Gyebi was a 2018 Summer Associate with Beusse Wolter Sanks & Maire, PLLC and is an incoming Associate in August 2019. This blog post was supervised by Terry Sanks and Amber Davis.

BWSM Recognized by U.S. News & World Report in “Best Law Firms” Report for 2018

BWSM Recognized by U.S. News & World Report in “Best Law Firms” Report for 2018

November 1, 2017 — Beusse Wolter Sanks & Maire is included in the 2018 “Best Law Firms” rankings published by U.S. News & World Report and Best Lawyers®. The 24th Edition of the Best Lawyers in America© publication identifies the top 5 percent of practicing attorneys in the United States and ranks law firms of these attorneys. BWSM secured rankings in 4 practice areas, including 3 Metropolitan Tier 1 rankings.
Metropolitan Tier 1
Orlando
Litigation – Patent
Patent Law
Trademark Law

Metropolitan Tier 3
Orlando
Copyright Law

Terry Sanks Contributes to the ACC Quarterly Newsletter

October 29, 2017—The 3rd Quarter Newsletter for the Associate of Corporate Counsel, Central Florida, includes an article authored by Terry Sanks. The title of the article is “What You Should Know About the Defend Trade Secrets Act of 2016.”

Gene Molinelli Moderates a Panel at the Annual LES Meeting

October 23, 2017—Gene Molinelli moderated a session at the Licensing Executives Society’s 2017 Annual Meeting in Chicago. The title of the session that Gene arranged is “A Decision Tree for Protecting Software Inventions – Unlocking Value in Software Patent Portfolios.”

 

Terry Sanks Recognized by the Ninth Judicial Circuit Pro Bono Committee

October 20, 2017—Terry Sanks was recognized by the Ninth Judicial Circuit’s Pro Bono Committee for outstanding pro bono service. At a ceremony on October 20, 2017, Terry was recognized for providing more than 500 hours of outstanding pro bono service. Based on his number of pro bono hours, Terry was in the top 85 attorneys so recognized at the ceremony. Terry’s pro bono service has primary been as a Guardian Ad Litem, representing children in abuse and neglect cases.

Terry Sanks was an invited speaker at the 5th Annual Conference of the National Docketing Association

September 19, 2017—Terry Sanks was an invited speaker at the 5th Annual Conference of the National Docketing Association that took place September 17-19. Terry spoke to the conference about recent developments in trade secrets law.

Congratulations to BWSM Attorneys Sanks, Davis, McLeod and Beusse for Being Recognized by Best Lawyers®

August 15, 2017—Beusse Wolter Sanks & Maire, PLLC is very proud to announce that Jim Beusse, Christine McLeod, Terry Sanks and Amber Davis have been selected by their peers for inclusion in the 2018 edition of The Best Lawyers in America©. This is the first year Amber has been recognized. The categories in which each of these attorneys were chosen are as follows:

·Copyright Law: Terry M. Sanks
·Litigation – Intellectual Property: Amber N. Davis
·Litigation – Patent: James H. Beusse
·Patent Law: James H. Beusse, Christine Q. McLeod and Terry M. Sanks
·Trademark Law: James H. Beusse, Amber N. Davis and Terry M. Sanks

 

Attorney Sanks Presents at the 36th Annual Seminar of the Florida Municipal Attorneys Association

July 28, 2017—Terry Sanks was invited to speak at the 36th Annual Seminar of the Florida Municipal Attorneys Association on July 28, 2017 at the Vinoy Renaissance St. Petersburg Resort & Golf Club. The title of Terry’s very well received presentation was “Technology in Practice and the City Attorney.” His presentation covered key rules of attorney conduct likely implicated by the use (ormisuse) of technology, insights about the prevalence of web technologies and mobile devices in the practice of law, law office data security, considerations when working on public wireless internet connections, and insights for those considering the use of third party remote “cloud” storage of files holding privileged or sensitive client information.

Florida Health Innovators Meetup Included Attorney Sanks as a Panelist

July 19, 2017—Terry Sanks participated as a panelist for a Florida Health Innovators’ recent meetup that was presented by Med Speaks. The topic of the event was “The Intersection of IP and Healthcare: An Expert Forum.” In addition to Terry Sanks, the esteemed panel included Brion Berman, Esquire, Senior Licensing Associate for the Office of Research and Commercialization at the University of Central Florida and Dr. Ramon Ruiz, Director of the Pediatric Craniomaxillofacial Surgery Practice and the Craniofacial Disorders Program at Orlando Health Arnold Palmer Hospital for Children.

Kevin Wimberly Speaks at Medical Marijuana Seminar

July 1, 2017—Kevin Wimberly spoke at the “Marijuana in Florida” seminar held June 29-30, 2019 at the Hyatt Regency Miami. Kevin’s presentation’s well received presentation was titled “Medical Marijuana & Trademarks.”

Terry Sanks Elevated to First Vice Chair of the Intellectual Property Committee of the Florida Bar

June 23, 2017—After serving last year as the Second Vice Chair for Continuing Legal Education, Terry Sanks was elevated to the First Vice Chair position for legislative matters of the Intellectual Property Committee after the Florida Bar’s Annual Convention. In this position, Terry will be the point person for the Florida Bar in monitoring and potentially advocating for or against new Florida legislative initiatives that might affect either individuals or companies’ intellectual property rights.

Attorneys Sanks and Beusse Recognized in Super Lawyers Magazine for 2017

June 12, 2017—Terry Sanks and Jim Beusse were recognized as SUPER LAWYERS by Super Lawyers magazine for 2017 for intellectual property law. Congratulations to them both for this well-deserved acknowledgement. Super Lawyers is a rating service of outstanding lawyers who have attained a high-degree of peer recognition and professional achievement. There is no cost to be considered or participate in their research. Super Lawyers uses a patented selection process includes independent research, peer nominations and peer evaluations.

Attorneys Davis and Wimberly Recognized as Rising Stars in Super Lawyers Magazine for 2017

June 11, 2017—Amber Davis and Kevin Wimberly were recognized as RISING STARS by Super Lawyers magazine for 2017. Congratulations to them both for this well-deserved acknowledgement.

BWSM Attorneys Sanks and Maire Recognized as IP STARS

May 22, 2017—BWSM is proud to announce that attorneys Terry Sanks and David Maire have been identified as IP STARS by Managing Intellectual Property Magazine, a legal directory considered to be the most authoritative and comprehensive. David’s IP STARS recognition is under the PATENT STARS category. Terry is recognized under both the PATENT STARS and TRADEMARK STARS categories.
IP Stars identifies and analyzes the leading IP firms in the United States to provide deeper insights to the complex US IP legal market for in-house counsel at Fortune 500 companies. Each year data is obtained from law firms, IP agencies and in-house counsel through surveys (‘World IP Survey’) and interviews. The information is reviewed and independent research is further conducted before producing the firm ranking tables and list of leading IP practitioners. The research is conducted rigorously and impartially. There is no cost to participate in the research. No firm or individual has paid to be included in the ranking tables or list. Inclusion is based on merit and recommendation by peers and clients. The IP STARS Handbook serving as a one-stop reference guide for US and international in-house counsel and private-practice lawyers worldwide.

Beusse Wolter Sanks & Maire is one of Three Law Firms in Florida Recognized as Highly Recommended

May 22, 2017—BWSM is proud to announce that is has been identified as “Highly Recommended” by Managing Intellectual Property Law Magazine. BWSM is one of only three firms in Florida identified as Highly Recommended.
IP Stars identifies and analyzes the leading IP firms in the United States to provide deeper insights to the complex US IP legal market for in-house counsel at Fortune 500 companies. Each year data is obtained from law firms, IP agencies and in-house counsel through surveys (‘World IP Survey’) and interviews. The information is reviewed and independent research is further conducted before producing the firm ranking tables and list of leading IP practitioners. The research is conducted rigorously and impartially. There is no cost to participate in the research. No firm or individual has paid to be included in the ranking tables or list. Inclusion is based on merit and recommendation by peers and clients. The IP STARS Handbook serving as a one-stop reference guide for US and international in-house counsel and private-practice lawyers worldwide.

ATTORNEY SANKS RECEIVES CERTIFICATE OF APPRECIATION FOR HIS SERVICE AS A GUARDIAN AD LITEM

May 19, 2017—The Board of Trustees of the Legal Aid Society of the Orange County Bar Association presented BWSM attorney Terry Sanks a Certificate of Appreciation for his exceptional efforts on behalf of Legal Aid clients and his commitment to public service.

BWSM RANKS NO. 9 FOR PRO BONO HOURS DONATED

May 12, 2017—Behind the efforts of attorneys Terry Sanks and Amber Davis, based on their pro bono hours worked, Beusse Wolter Sanks & Maire was ranked No. 9 in the Orlando Business Journal’s Pro Bono Law Firms list for 2017. Both Terry and Amber serve as Guardian Ad Litems, individuals appointed by a judge to advocate for the best interest of a child suspected to be a victim of parental abuse, neglect or abandonment.

BWSM RANKS NO. 2 FOR THE NUMBER OF IP ATTORNEYS IN CENTRAL FLORIDA

May 12, 2017—The Orlando Business Journal published its list of Intellectual Property Law Firms for 2017 and Beusse Wolter Sanks & Maire has retained it No. 2 ranking based on the number of intellectual property attorneys practicing in Central Florida, practicing in the areas of patents, trademarks, service marks, copyrights, domain names, etc.

Attorney Terry Sanks included in Orlando Magazine Recognizing Orlando’s Best Lawyers

April 5, 2017—Terry Sanks is featured in a group photo in the April edition of “Orlando®—The City’s Magazine” as being one of Orlando’s Best Lawyers. Terry is recognized for patent law, trademark law and copyright law. In addition to being featured, he and his wife also attended a reception, on April 4, 2017, hosted by both the “Orlando” magazine and Barry University’s College of Law honoring all who attorneys who were also recognized as Best Lawyers. Jim Beusse was also included in the list of Best Lawyers, for patent law and litigation-patent, and so was Christine McLeod for patent law.

The list of attorneys is compiled by conducting exhaustive peer review surveys in which tens of thousands of leading lawyers confidentially evaluate their professional peers. If the votes for an attorney are positive enough for recognition in Best Lawyers, that attorney must maintain those votes in subsequent polls to remain in each edition. Lawyers are not permitted to pay any fee to participate in or be recognized by Best Lawyers. For more than three decades, Best Lawyers publications which includes its Best Lawyers list, have earned the respect of the profession, the media, and the public, as the most reliable, unbiased source of legal referrals anywhere.

Attorney Amber Davis Elected to OCBA Executive Council

April 4, 2017—Amber N. Davis was recently elected by her colleagues in the Orange County Bar Association to one of the three positions available on the OCBA Executive Council. Amber will serve a two (2) year term under incoming Presidents Liz McCausland and Richard Dellinger.

Attorney Sanks is the Keynote Speaker and Lockheed Martin’s Annual Inventor Luncheon

March 29, 2017—Attorney Terry Sanks was the invited Keynote speaker at Lockheed Martin Missiles and Fire Control’s 2017 Annual Inventor Luncheon. Terry’s insightful presentation was titled “A Look Back at the Impact of the America Invents Act and How Companies are Leveraging Patents in View of the Changes.”

BWSM Attorneys Attend the 8th Annual Intellectual Property Symposium

March 30, 2017 – March 31, 2017—Attorneys Terry Sanks, Amber Davis & Christine McLeod attended the 8th Annual Intellectual Property Law Symposium hosted on by the Intellectual Property Committee of the Business Law Section of the Florida Bar. As the Vice Chairman of the Intellectual Property Committee, in addition to attending, Terry Sanks was also instrumental in organizing the Symposium and actively participating in the successful running of this year’s event. The Symposium included topics ranging from protecting Marijuana via utility patents, plant patents and trademarks to surveys in IP cases and the most recent Defend Trade Secret Act passed in 2016.

BWSM Attorneys Sanks and O’Brien Lecture at the University of South Florida

March 9, 2017 & March 23, 2017—Cian O’Brien lectured at the Intellectual Property class that is offered through the University of South Florida Center for Entrepreneurship as part of it Masters’ degree program on March 9, 2017. Cian spoke on patents. Two weeks later, Terry Sanks lectured to the same class. Terry’s in-depth discussion canvassed numerous areas of intellectual property law, including utility patents, design patents, trademarks, trade dress copyrights, and right of publicity, in exploring these laws and how they may be impacted by advancement in additive manufacturing (3D printing) technology.

Amber Davis Receives Florida Bar Appointment

Amber N. Davis was recently appointed to the Florida Bar’s Ninth Judicial Circuit Grievance Committee “F”.

Attorney Davis Receives Client Choice Award for 2017

February 14, 2017—Beusse Wolter Sanks & Maire, PLLC is proud to announce that one of its partners, Amber N. Davis, recently received the Client Choice Award for Trademarks in the State of Florida . Established in 2005, the Client Choice Awards recognize those partners around the world that stand apart for the excellent client service they provide. The criteria for the awards focus on the ability to add real value to clients’ business above and beyond other players in the market. Uniquely, these awards survey senior corporate counsel only, with this year’s winners chosen from a pool of more than 2,000 individual client assessments. As part of the assessments, Clients are asked to rate individual lawyers and law firms on the following client service criteria: quality of legal advice, commercial awareness, industry knowledge, strategic thinking, billing transparency, tailored fee structures, value for money, responsiveness, effective communication, clarity of documentation, sharing of expertise, appropriate staffing, project management, use of technology, loyalty and ethics. Amber N. Davis ranked extremely high in each of the categories by her clients ranking her as the “Client Choice” for Trademarks in the State of Florida.

Amber Davis recognized as One of the Top Trademark Attorneys in the State of Florida

January 18, 2017—Attorney Amber N. Davis was recently recognized by the World Trademark Review (“WTR”) as one of the top Trademark Attorneys in the State of Florida for 2017. The WTR is the world’s only independent daily news and information service exclusively reporting on trademark issues for in-house and private practitioners internationally. Individual practitioners, law firms and trademark attorney practices qualify for inclusion in the WTR 1000 on receiving sufficient positive feedback from market sources. The extensive research process was conducted over a four-month period by a team of full-time analysts and involved nearly 1,500 face-to-face and telephone interviews with trademark specialists across the globe. Through this research process, Amber’s client’s described her as “honest and hardworking,” someone that takes a “meticulous approaching to trademark prosecution and enforcement” and “her level of integrity and communication skills are of the highest caliber.”

Nicholas Richardson, research editor for the WTR 1000, explains: “A strong brand is vital to success in today’s intensely competitive and increasingly globalised market. Trademarks are key tools through which businesses can protect the goodwill and reputation inherent in their brands, and build and maintain demand for their products and services. As a result, external advisers play a crucial role in developing and implementing brand strategies for both local and international markets and in protecting these vital assets in the face of infringement. It is thus imperative to choose the best legal counsel and the WTR 1000 serves as an essential guide in today’s brand-focused economy – as well as highlighting the health of the trademark marketplace.”

Beusse Wolter Sanks & Maire, PLLC has a robust trademark practice not only in Florida, but throughout the United States and abroad. If you are interested in protecting your brand, please feel free to contact one of our trademark attorneys for a consultation.

Shanti Hill Co-Authors Chapter in ABA Publication

January 10, 2017—Shanti Hill co-authored a chapter in a book published by the American Bar Association (“ABA”) entitled “Recent Developments in Business and Corporate Litigation, 2016 Edition – Intellectual Property Law.” Shanti co-authored the chapter specific to the Eleventh (11th) Circuit Court of Appeal caselaw containing the latest and most significant developments in intellectual property in the 11th Circuit.

Terry Sanks Authors INTA Blog Post

January 6, 2017—Terry Sanks co-authored an article published on the International Trademark Association (“INTA”)Blog. The title of the article is “You are Now Connecting to Work Remotely: Is Your Cybersecurity Up to the Task?” The post can be found here: http://www.inta.org/INTABlog/Community.aspx/ As an illustration to BWSM’s global reach, as a member of the Technology Team of the INTA Law Firm Committee, Terry co-authored this article with a fellow committee member who practices law in New Zealand.

Shanti Hill Publishes an Article in the OCBA Briefs

January 2, 2017—The Briefs, a publication of the Orange County Bar Association (“OCBA”), published an article written by Shanti Hill. The article was submitted on behalf of the Intellectual Property Committee of the OCBA and is entitled “The Slants and Redskins: Trademarks, the First Amendment, and the Supreme Court – Can the Government Ban Registration of Trademarks It Deems Disparaging?”

BWSM Named a 2016 Law Firm 500 Honoree

October 10, 2016—Beusse Wolter Sanks & Maire, PLLC has been named a 2016 Law Firm 500 Honoree in the 1st Annual Law Firm 500 Award Honoree List of America’s Fastest Growing Law Firms. Earlier this year BWSM was nominated for its growth, operational excellence and commitment to client service. Each nominee was evaluated by an outside accounting firm, and subjected to an identical review process. The award honorees are a beacon of light for the legal industry demonstrating innovation, operational excellence, and a commitment to client service.

Romano and DeAngelis Present the First of Six Lectures at Florida Institute of Technology

May 17, 2016—BWSM is hosting a six-part lecture series on six different intellectual property topics at the Florida Institute of Technology (“Florida Tech”) as part of Florida Tech’s Skill Space continuing education program. This luncheon lecture series is free for Florida Tech students, faculty and staff whereas there is a nominal charge for others attending. The presenters are BWSM attorneys John DeAngelis and Fred Romano. The first lecture occurred this week and the topic was “How Can I Use Copyrights to Protect and Grow My Business Assets?”
The next scheduled lectures and dates are as follows:
June 14: Leveraging Patent Rights to Achieve Business Success.
September 13: How Should Trademark Rights Be Used to Benefit a Business?
October 11: What Terms Should Contracts Require to Protect My IP and Avoid Liability? What Are My Rights and Remedies?
November 8: Strategies for Protecting Mobile Apps and Other Software-Based Products.

Sanks and Hill Play Leading Roles in the Florida Bar’s 7th Annual IP Law Symposium

April 8, 2016—Terry Sanks chaired the 7th Annual Intellectual Property Law Symposium, presented by the Business Law Section of the Florida Bar. Under Terry’s leadership as Program Chair, this Symposium was full of current intellectual property law topics of interest where the presenters came from as far away as California, Illinois, Massachusetts, and Washington, D.C. The Keynote speaker was ITC Commissioner Irving A. Williamson and the lunchtime speaker was Chief Administrative Judge Nathan Kelley (Acting) of the USPTO Patent Trial and Appeal Board. In addition to introducing Judge Kelley, Shanti Hill (part of the steering committee) moderated a panel with Apple lead counsel Harold McElhinny regarding the Apple v. Samsung design patent wars and design patent litigation considerations. Other topics of interest included recent changes in European Union trademark practice, malpractice trends in intellectual property law, cyber security, copyright and content ID from YouTube’s perspective, and a year in review overview of patents, trademarks and copyrights.