close

For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Named Technology Group of the Year by Law360
  • Ranked #1 in the Americas for number of technology deals in 2015 by Mergermarket
  • Nearly 20 percent of Fenwick partners are ranked by Chambers
  • Consistently ranked among the top 10 law firms in the U.S. for diversity
  • Recognized as having top mentoring and pro bono programs by Euromoney

MORE >

We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041
650.988.8500

San Francisco Office
555 California Street
13th Floor
San Francisco, CA 94104
415.875.2300

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101
206.389.4510

New York Office
1211 Avenue of the Americas
32nd Floor
New York, NY 10036
212.921.2001

Shanghai Office
Unit 908, 9/F, Kerry Parkside Office
No. 1155 Fang Dian Road
Pudong New Area, Shanghai 201204
P.R. China
+86 21 8017 1200


Patent Litigation Alert: Federal Circuit Limits Forum-Shopping

The Federal Circuit last week issued two opinions that substantially impact the tactics used in Texas-based patent litigation. In Hewlett-Packard v. Acceleron,* the court revisited declaratory judgment jurisdiction, finding that carefully crafted pre-suit correspondence from nonpracticing entity Acceleron could not prevent a declaratory judgment action in Delaware. In another case earlier in the week, the Federal Circuit issued a rare writ of mandamus, ordering transfer of a case out of the Eastern District of Texas.

In Hewlett-Packard, the Federal Circuit addressed the limits of declaratory judgment jurisdiction following the Supreme Court's decision in MedImmune. In MedImmune, the Court rejected the "reasonable anticipation of litigation" standard applied by the Federal Circuit. The Federal Circuit's follow-on decision in SanDisk thus held that "where a patentee asserts rights under a patent based on certain identified ongoing or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without a license, an Article III case or controversy will arise." However, the facts in SanDisk involved extensive negotiations and meetings between the parties, including the exchange of infringement charts. In Hewlett-Packard, the contact between the parties was far more limited. After HP filed suit in Delaware, the district court granted Acceleron's motion to dismiss the suit for lack of subject matter jurisdiction, noting that the letters from Acceleron to HP did not include "a statement of infringement, identification of specific claims, claim charts, prior pleadings or litigation history, or the identification of other licensees." Hewlett- Packard Co. v. Acceleron, LLC, 601 F. Supp. 2d 581, 589 (D. Del. 2009). However, the Federal Circuit panel, led by Chief Judge Paul Michel, reversed. The court found that Acceleron's correspondence deadlines, refusal to accept a litigation standstill, and failure to request a confidentiality agreement, combined with Acceleron's status as a noncompetitor patent holding company could reasonably be interpreted by HP as an implicit assertion of rights under the totality of the circumstances. The court noted that as a nonpracticing entity, "without enforcement [Acceleron] receives no benefits from its patents." Moreover, the court noted that while the district court had considered Acceleron's lack of litigation history as a factor, the fact that Acceleron had obtained the patent only months before contacting HP meant that this factor should not weigh against declaratory judgment jurisdiction.

In another decision last week, the Federal Circuit raised the bar for plaintiffs seeking to litigate in a forum with no meaningful connection to the dispute. In In re Hoffman- La Roche, Inc., the court granted a writ of mandamus and directed the United States District Court for the Eastern District of Texas to transfer the action to the forum where the invention had been developed and where a number of non-party witnesses were located within the court's subpoena power.

Novartis, a California company, brought an infringement action against Hoffman-La Roche and Trimeris in the Eastern District of Texas. The defendants moved to transfer the action to the Eastern District of North Carolina, as the inventors were affiliated with Duke University and the drug at issue had been developed and tested by Trimeris in a lab in North Carolina. In their initial disclosures the parties identified four potential non-party witnesses in North Carolina, one in Houston, Texas, and several others around the country. Novartis argued that because witnesses were spread around the country, and that because Novartis had sent 75,000 pages of documents to their local counsel in the Eastern District of Texas, the motion to transfer should be denied. The district court agreed, finding that the case was decentralized, that four non-party witnesses in North Carolina were not a substantial number, that the other sources of proof were nationwide, and that no other forum had a localized interest in the matter.

The Federal Circuit panel, led by Circuit Judge Arthur Gajarsa, disagreed with the district court, holding that there was a "stark contrast in relevance, convenience, and fairness between the two venues" of North Carolina and Texas. While the Eastern District of North Carolina's interest was clear, no relevant factual connection to the Eastern District of Texas existed other than sending 75,000 pages of electronic documents to local counsel. By contrast, a local interest clearly existed in the Eastern District of North Carolina where the drug had been developed and where the "work and reputation of several individuals residing in or near that district" had been called into question.

While the Hoffman decision does not involve a nonpracticing entity, it may make it harder for such entities to file and keep cases in the Eastern District of Texas absent a real connection to that forum. The Hewlett-Packard case will also make it easier for the targets of licensing efforts, including those by non-practicing entities, to file suit in other alternative forums.

*Fenwick & West attorneys Charlene Morrow, Heather Mewes and Lauren Whittemore represented Hewlett-Packard in Hewlett-Packard v. Acceleron.


For further information, please contact:

Charlene M. Morrow, Litigation Partner
cmorrow@fenwick.com, 650.335.7155

Heather N. Mewes, Litigation Partner
hmewes@fenwick.com, 415.875.2302

Lauren E. Whittemore, Litigation Associate
lwhittemore@fenwick.com, 415.875.2360

©2009 Fenwick & West LLP. All Rights Reserved.


The views expressed in this publication are solely those of the author, and do not necessarily reflect the views of Fenwick & West LLP or its clients. The content of the publication ("content") is not offered as legal or any other advice on any particular matter. The publication of any content is not intended to create and does not constitute an attorney-client relationship between you and Fenwick & West LLP. You should not act or refrain from acting on the basis of any content included in the publication without seeking the appropriate legal or professional advice on the particular facts and circumstances at issue.