Posts in IPWatchdog Articles

Online shopping has become a huge part of our everyday lives. In fact, 15% of all 2020 retail sales are projected to take place online. Unfortunately, despite their convenience, e-commerce retail platforms also provide fertile ground for counterfeiters because shoppers cannot physically examine the products being sold and shoppers often cannot identify the ultimate seller.  Worse yet, online counterfeiting is not limited to fake fashion and luxury goods, but more often involves poor quality or tainted products that endanger the health and safety of the purchaser. Reported incidents of dangerous online counterfeit purchases have included children’s car seats that disintegrate in crashes, engine oils that contain dirt and water, cold medications that are simply sugar pills, and cell phone adapters that can shock or electrocute consumers. Counterfeiting is no longer a sort of comic fakery that only dupes designer bargain hunters. Rather, it has become a real problem for everyday consumers.

In 2019, the issue of preservation of constitutional arguments before the USPTO, which had basically been dormant for a decade, was abruptly and dramatically revived. Now the subject of whether constitutional arguments generally ought to be preserved before the agency is settled, at least for the time being. Constitutional arguments should ordinarily be preserved before the agency; otherwise those constitutional arguments might be summarily deemed forfeited on appeal.

The U.S. District Court for the Central District of California on Monday granted Katy Perry’s motion for judgment as a matter of law (JMOL) and vacated the jury’s verdicts regarding liability and damages. In particular, the court found that the plaintiffs did not satisfy the extrinsic test, whereby the court determined whether any elements of plaintiffs’ eight-note ostinato (defined as “a continually repeated musical phrase or rhythm”) from the song “Joyful Noise” were protected and objectively similar to the allegedly infringing eight-note ostinato from Perry’s song “Dark Horse.”

It is with great sadness that I inform the intellectual property law community of the passing of the Honorable Gerald J. Mossinghoff on March 20, 2020.  He was 84 years old.  I knew Gerry for more than 37 years, first as a Patent Examining Group Director when he was the Commissioner of Patents and Trademarks in the Reagan Administration, then as a colleague at the Oblon firm, where I was a partner and he a Senior Counsel.  He was a cherished friend.  We will miss him dearly. Gerald J. Mossinghoff was born in St. Louis on September 30, 1935. He received a bachelor’s degree in electrical engineering from St. Louis University and a law degree from George Washington University. He worked four years as an examiner at the Patent Office, starting in 1957, before leaving to join a law firm. He returned to government service for a series of jobs including the post of director of legislative planning at the USPTO. Later, at the National Aeronautics and Space Administration, he rose to the position of deputy general counsel.

This week in Other Barks & Bites: the USPTO closes to the public amid the coronavirus pandemic while waiving various patent and trademark applicant requirements during “extraordinary situation;” former Google engineer Anthony Levandowski pleads guilty to trade secret theft; Israel approves a generic version of a viral treatment that could help coronavirus patients despite AbbVie’s patents; the Federal Circuit strikes down Facebook’s attempt to use joinder to increase the number of patent claims challenged in an IPR; the Ninth Circuit affirms a lower court ruling that nixes copyright infringement claims against Disney over the 2015 film “Inside Out;” the CNIPA issues new IP work system guidelines for Chinese state-owned entities; YouTube and CNN will reportedly cut streaming video quality in response to massive growth in European bandwidth usage; the ITC opens a Section 337 investigation into touchscreen devices made by Apple, Samsung and LG Electronics; and Judge Snyder awards JMOL to Katy Perry nixing copyright damages in “Dark Horse” case.

Judges in Germany have dealt what may be a fatal blow to the project to create a Unified Patent Court (UPC) in Europe. In a decision published today, the German Federal Constitutional Court said the Act of the Approval of the UPC Agreement was void. (BVerfG, Beschluss des Zweiten Senats vom 13. February 2020 – 2 BvR 739/17 -, Rn. (1-21).) The Act of Approval was passed unanimously by the Second Chamber of the Bundestag but only about 35 members were present. The Court said that a two-thirds majority of the Bundestag was required.

On March 13, American semiconductor developer Broadcom Corporation filed a lawsuit in the Central District of California  alleging claims of patent infringement against streaming media producer and provider Netflix, Inc. At a moment in history when streaming services are going to be in higher demand than ever for some time due to social distancing mandates, the complaint marks the first chapter in what could become an interesting legal battle involving dynamic networking and video encoding patent claims. If Netflix is found to infringe, the streaming video giant could ultimately be facing a large verdict. Broadcom is asserting claims from nine U.S. patents and accuses Netflix of directly infringing the patent claims through its Internet video streaming technology and indirectly infringing by inducing end users to infringe through their use of the Netflix software application

The U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the District Court for the Southern District of West Virginia finding that GMS Mine Repair and Maintenance, Inc. (GMS) infringed Hafco Foundry and Machine Company, Inc.’s (Hafco) design patent, U.S. Design Patent No. D681,684 (the ’684 patent), directed to a rock dust blower for distributing rock dust in areas such as coal mines.  The CAFC also affirmed the district court’s denial of GMS’ request for a new trial due to errors in the jury instructions. Judge Newman concurred with the majority’s decision but wrote separately to note that she would have resolved the matter of damages by accepting Hafco’s proposed remitter of $110,000, which was the total of Hafco’s lost profits.

We live in interesting times. No corner of professional or personal life seems untouched in at least some way by the latest coronavirus (named SARS-CoV-2) and the disease it causes (named “coronavirus disease 2019” abbreviated COVID-19). Governments all around the world are either demanding or suggesting that people quarantine themselves or engage in social distancing. The intellectual property world is no different. The United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO), IP Australia, the German Patent and Trade Mark Office (DPMA), and the UK Intellectual Property Office (UKIPO) are just some of the Offices that have in recent days issued COVID-19 guidance to inform stakeholders of how the Offices will handle workflow and meetings during this global health emergency.

In Facebook v. Windy City Innovations, the U.S. Court of Appeals for the Federal Circuit earlier today ruled that the Patent Trial and Appeal Board (PTAB) erred both in allowing Facebook to join itself to a proceeding in which it was already a party, and in allowing Facebook to add new claims to the inter partes reviews (IPRs) at issue through that joinder…. On the topic of whether the language of § 315(c) authorizes the joinder of a person as a party to a proceeding in which it is already a party, the Court was again clear on what the plain language of § 315(c) allows. The Director is permitted  “to join as a party [to an already instituted IPR] any person’ who meets certain requirements. 35 U.S.C. § 315 (emphases added).”

Unfortunately, some simply cannot help themselves but to use every opportunity – real or imagined – to take a cheap shot at a patent owner for having the audacity to seek to enforce patent rights, so it should come as no surprise that false and misleading reports would surface in the life sciences world relating to the latest coronavirus (named SARS-CoV-2) and the disease it causes (named “coronavirus disease 2019” abbreviated COVID-19). It was only a matter of time. The true story begins in 2018, when Fortress Investment Group acquired the patent assets of Theranos Inc. Fast forward to March 9, 2020, when Labrador Diagnostics LLC filed a patent infringement lawsuit against BioFire Diagnostics, LLC and bioMerieux S.A., asserting U.S. Patent No. 8,283,155 and U.S. Patent No. 10,533,994, patent assets acquired by Fortress Investment Group from Theranos. This patent infringement lawsuit was not directed to testing for COVID-19, and instead focuses on activities by the defendants over the past six years that are not in any way related to COVID-19 testing.

Subsequently, two days after being sued for infringing the ‘155 patent and the ‘994 patent, on March 11, 2020, bioMerieux announced the forthcoming launch of three different tests “to address the COVID-19 epidemic and to meet the different needs of physicians and health authorities in the fight against this emerging infectious disease.”

With Coronavirus delaying prosecution, preventing courts from empaneling juries, and keeping attorneys home with the kids, you would think filings would have dropped; instead, we saw a slight uptick this week. We saw Elizabeth Holmes’ Theranos patents reemerge, witnessed the start of a battle between in-flight WiFi companies, and even watched sheets of sapphire sold to the government stay hot.

The latest episode of the Clause 8 podcast features an interview with Josh Malone – the inventor of Bunch O Balloons and America’s foremost advocate for reliable patent rights. Josh came up with the idea for Bunch O Balloons to help his kids fill up 100 water balloons in less than one minute. It eventually became the most popular toy in America. However, before Bunch O Balloons even came to market, another company copied it and started selling its own versions of the product. Luckily – or so he thought at the time – Josh filed a patent application for his Bunch O Balloons invention. He did not know the enormous amount of time, money, and luck it would take to successfully enforce patents that covered his invention. This episode tells the story of what it took, including taking a trip to Bentonville, AR in the middle of the night to try to convince Walmart to stop selling knock offs of his product.

As outside general counsel to over 150 emerging growth companies in recent years, as well as to their venture capital and growth equity investors, and as someone who represents buyers and sellers in M&A transactions, I am often asked how to protect businesses from interruption to their key customer and supplier relationships. Specifically, in the age of COVID-19, now characterized by the World Health Organization as a “global pandemic,” I am being asked whether a counter-party can trigger a “material adverse change” clause to terminate a contract.

The U.S. Court of Appeals for the Federal Circuit (CAFC) has reversed a district court decision finding certain claims of two patents covering prenatal DNA testing patent ineligible. The CAFC held that “the claimed methods utilize the natural phenomenon that the inventors discovered by employing physical process steps” and thus were patent-eligible. The patents at issue in the case acknowledge but are not related to the patented invention held invalid in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1373 (Fed. Cir. 2015). The opinion was authored by Judge Lourie, with Judge Reyna dissenting.