Posts in Guest Contributors

The records revealed that Dr. Bielawski repeatedly testified that he personally conducted laboratory testing on J&J’s accused lenses when, in fact, the testing was conducted by Dr. Bielawski’s graduate students and various lab supervisors. Further, evidence suggested that Dr. Bielawski overstated his qualifications and experience with the relevant testing methods, and in fact had no experience whatsoever. There was also evidence that Dr. Bielawski withheld test results and data analysis that would have undermined his opinions and trial testimony.

The Federal Circuit affirmed. Undertaking an extensive analysis of the legislative history of Lanham Act damages, the Court attempted to explain a 1999 amendment inserting language regarding willfulness. Because the “willful violation” language appears to modify violations of § 1125(c) regarding dilution, Romag argued that the amendment negated any preexisting willfulness requirement for causes of action other than dilution. Relying heavily on Second Circuit precedent, which governed the district court decision, the Court disagreed.

After much public comment and debate, new changes to rules for post-grant administrative trials before the Patent Trial and Appeal Board (PTAB) go into effect on May 2, 2016. These final rule changes, which are the second set of changes since the America Invents Act (AIA) went into effect, are the culmination of a series of PTAB listening tours and public comments to the rule change proposals published in August 2015. Among other things, the new rules are intended to address concerns that patent owners were at a disadvantage in responding to patent challenges, particularly during the pre-institution stage of a PTAB proceeding. The rule changes also introduce certification requirements for documents filed with the PTAB, confirm the broadest reasonable interpretation (BRI) standard, as well as exceptions to the BRI standard for expiring patents, and adopt an appellate-style word count limit for major briefs.

Source Code Review is the most powerful tool in a litigator’s war chest in patent and trade secrets cases. An important consequence of the judicial climate shifting farther away from business methods and closer to technically complex IP is that receiving parties now face a higher burden of proof and subsequently higher legal costs. Not only are receiving parties now required to be more diligent prior to a case filing but they also end up spending extra thousands of dollars reviewing millions of lines of code to successfully formulating their infringement arguments. A significant cost and exposure risk can be avoided simply by a diligent assessment on both sides as to what source code needs to be produced to the receiving party.

Pride Mobility appealed, and noted that the Board construed claim 7 as requiring a “substantially planar” mounting plate “oriented perpendicular” to the axis of the wheelchair’s drive wheel, which the Board found in Goertzen. The Court found that the Board had misconstrued Claim 7, because the claim language made clear that the surface which rendered the mounting plate “substantially planar” must be perpendicular to the drive axis, not some other geometric feature of the mounting plate.

On one hand, logic dictates that the broader the interpretation of the claim, the more extensive the array of relevant prior art—and in turn the more likely that the claim will be held invalid in light of that prior art. On the other hand, evaluating whether the Board’s use of the BRI protocol in an IPR claim construction will lead to “different results” than the plain and ordinary meaning construction used by federal courts in claim construction is complicated by the relatively scant evidence on the subject, and the inevitable fact that this evidence is naturally dependent on particular prior art and invalidity and obviousness arguments specific to a particular patent. Even putting aside the question of what impact a different claim construction standard may have in an IPR, In re Cuozzo Speed Technologies will not address several powerful differences between an IPR and district court litigation that impact whether a particular patent claim survives.

Disappointing some (i.e., Patent Owners) who were looking for a more significant changes to the rules governing inter partes review, post grant review, and/or covered business method review, on April 1, 2016, the Patent Office issued its Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board. About one year earlier, the Office hinted at the possibility of more sweeping proposals for change, but many of the more major proposals were not implemented and only more incremental change was adopted. Here are the five things every Patent Owner and Petitioner must know about the new ground rules governing the most seismic change in patent law in several generations – post grant administrative trials.

Versata presented four questions to the Supreme Court, some very specific to CBM proceedings. In its amicus brief, Broadband iTV more generally asks the Supreme Court to revisit its patent-eligibility precedents, and clarify how computer-implemented claims can be found patent-eligible under Alice to correct the ongoing misapplication of Alice in the lower courts and by the PTAB. Since Alice, more than 100 patents and thousands of claims have been declared invalid under 35 U.S.C. § 101 by the lower courts or PTAB using an overly broad interpretation of Alice. Thus, it is important for this Court to take up the issue of patent-eligibility once again and right the course.

Cardpool, Inc., v. Plastic Jungle, Inc., NKA Cardflo Inc. (Fed. Cir. Apr. 5, 2016) (Before Newman, Reyna, and Wallach, J.) (Opinion for the court, Newman, J.)(Federal Circuit held dismissal with prejudice operates as res judicata for the same cause of action even if a subsequent reexamination amends claims.).

Business Insider reports that Yahoo’s patent portfolio could generate up to $3B. We disagree and we use data to show why. With an estimated street price of $772M (high of $1.15B, a low of $393M), Yahoo has a valuable asset, just not a $3B asset. We often see patent prices stated without any data to back up the analysis. We think this needs to change. Below, we show how a quick analysis of Yahoo’s portfolio and the patent market leads to some bounds on the street price of the patents.

As the Library of Congress ushers in a new era with a new Librarian, the time is ripe to ensure that the Copyright Office has the accountability and authority to best serve all of its stakeholders—most of all the American public. The nomination of Dr. Hayden as the next Librarian of Congress provides us with the opportunity to clarify the importance of the roles both the Library of Congress and the U.S. Copyright Office play in creating, cataloging, and administering the systems that preserve and promote our nation’s culture, by ensuring that the two talented leaders have a close partnership and a direct working relationship, with appropriately defined authority and responsibility for their respective areas of expertise.

The PathWays system is designed to help applicants predict which art units an application is likely to be filed before the application is even filed. A unique semantic search algorithm compares user submitted text to weighted key words derived from an exhaustive collection of application documents clustered in each USPTO art unit.

Where an ex parte order is unavailable under the DTSA, complainants may still seek injunctive relief. However, unlike the UTSA, which also offers injunctive relief, the DTSA includes language providing that an injunction is improper and not issuable if it: (1) prevents a person from entering into an employment relationship, or if conditions placed on employment are not supported by evidence of threatened misappropriation, or (2) otherwise conflicts with an applicable state law prohibiting restraints on the practice of a lawful profession, trade, or business.

Last June, Walter Palmer, an American dentist and recreational big game hunter, shot and killed Cecil, a southwest African lion who had been the subject of a study by Oxford University and a major attraction for Hwange National Park in Zimbabwe. At first, Cecil’s killing drew international outrage and media attention, the hashtag #CecilTheLion spreading like wildfire on social media. Then it drew trademark applications. At least four different applicants currently have live trademark applications pending in the United States for CECIL THE LION, covering everything from the noble, including charitable fundraising services and information and news commentary relating to wildlife conservation, to the commercial, including dolls, trading cards, and charms.

Trade secrets are the only major type of intellectual property (IP) that is not backed by U.S. federal civil remedies to compensate owners for theft. Notably, American businesses face hundreds of billions of dollars in losses per year due to trade secret misappropriation, and the problem is worsening, as cybertheft (particularly from China) continues to grow in scale… Appropriately crafted civil trade secret legislation is no panacea, but it holds the promise of providing tangible benefits, not just to private trade secret holders, but to the overall economy. In addition to vindicating property rights and protecting individual businesses, such legislation should enhance the effectiveness of the competitive process and thereby raise economic welfare.