Ryan Deck is an Associate with Troutman Pepper, primarily focusing on patent and complex litigation. His litigation experiences cover all aspects of a case, from investigation and diligence through pleadings, fact and expert discovery, trial, appeals, and settlement, as well as mediation, arbitration, and licensing. Ryan has significant experience in Section 337 investigations before the U.S. International Trade Commission (USITC), as well as federal court litigation throughout the U.S. and state court actions in Massachusetts. He also has experience litigating trademark, trade secret, and contract matters in both state and federal courts.
Many universities recognize the value of their patent portfolios and the need to protect their intellectual property rights from unlicensed and unfair use. When licensing negotiations break down, universities generally seek to enforce their rights in U.S. district courts, but overlook a potentially more favorable forum: the United States International Trade Commission (ITC). The ITC is a unique patent forum with experienced judges, defined patent rules, and statutory mandates to provide a timely resolution. More importantly, the ITC was designed protect U.S. industries, including the research and development performed at universities. This is not a hypothetical exercise: one university recently utilized the ITC, blazing a path that others can follow. As explained below, more universities should follow suit.
Recently, in In Re: Volkswagen Group of America, Inc., the United States Court of Appeals for the Federal Circuit (CAFC) further defined the level of control a defendant must exercise over an in-district agent to establish patent venue – i.e., where a case can be filed. The Federal Circuit held that the requisite control a principal must establish over its alleged agent in order to establish venue is “interim control”: day-to-day control over the manner of carrying out the specific actions for which the alleged agency relationship exists. Accordingly, in reversing the lower court, the Federal Circuit held that the dealerships in question were not agents of Hyundai or Volkswagen for the purposes of selling cars to consumers and providing warranty services.