Posts in Guest Contributors

In Allen v. Cooper, the U.S. Supreme Court held that the Copyright Remedy Clarification Act of 1990 (CRCA) (codified at 17 U.S.C. §§ 501(a) & 511) did not abrogate a state’s sovereign immunity from copyright infringement liability. A casual reading of that decision might have led one to reasonably believe that it ended the plaintiffs’ copyright case. After all, the Supreme Court indicated that it affirmed a holding that the CRCA was “invalid.” But, as with so many other issues encountered in the legal realm, much lies below the surface. The aftermath of the Supreme Court’s decision cast light on the realization that the Court addressed only “prophylactic” abrogation, which seeks to deter constitutional harm before it occurs. On remand, the plaintiffs convinced the district court to consider whether the state’s sovereign immunity could be negated via a “case by case” type of abrogation, which requires actual violation of both a federal statute and the Fourteenth Amendment.

The 1950 case Desny v. Wilder set the ground rules for an idea theft/implied contract case in California. In Desny, the plaintiff Victor Desny wrote a script depicting the real-life story of Floyd Collins, a boy who made headlines after he was trapped in a cave 80 feet underground. In an effort to market his script, Desny called Billy Wilder, a writer, producer and director at Paramount Pictures. Desny could not get through to Wilder and subsequently stripped his script to the bare facts so that Wilder’s secretary could copy it in shorthand over the phone. After reading his synopsis, Desny told Wilder’s secretary that Wilder and Paramount could use the script only if they paid him a reasonable amount for doing so. Shortly thereafter, Wilder created his own movie script mirroring Desny’s. Because Desny’s script was based on historical facts, and because Desny only conveyed the bare minimum of those facts to Wilder’s secretary, both parties conceded for the purpose of the appeal that the synopsis was not sufficiently original to form the basis of a federal copyright claim. The court, however, held that Desny stated sufficient facts to establish the existence of an implied-in-fact contract between the parties.

Now is an exciting time in the world of artificial intelligence (AI) and intellectual property law. Academics have been interested in this field for a long time, and more narrowly in certain issues, like the legal status of works created by an AI in the absence of a traditional human author (AI-generated works). But AI-generated works have not traditionally been very interesting to lawyers, policymakers, or businesses, because while AI has been functionally making creative works for decades, the technology was never that commercially useful.

Patent owners think Inter Partes Reviews (IPRs) are a fixed game. Their concern goes beyond structural and procedural aspects of the IPR process; patent owners also believe that Patent Trial and Appeal Board (PTAB) judges are hostile to patents. Their concerns are particularly pronounced because their opportunities for appellate review of those PTAB judges’ decisions is limited. This article examines whether this concern is justified.

A company’s trademark activity is a very telling indicator of whether it is interested in a particular country’s or region’s market. Often, a national intellectual property (IP) office or the World Intellectual Property Organization (WIPO) IP registry can speak loudest about a company’s true intentions. Russia’s full-scale invasion of Ukraine began on February 24, 2022. It is instructive to examine how foreign companies behaved with respect to IP registration and renewal in Ukraine to predict how they view business prospects in Ukraine going forward.

In January 2023, the Federal Trade Commission (FTC) unveiled a proposed ban on non-compete clauses that prohibits employees from joining or forming competitive firms following the termination of their employment. According to the FTC, non-compete clauses unfairly and unnecessarily stifle employees’ ability to pursue better employment opportunities. While this criticism may ring true in the case of lower-wage workers, such as restaurant and warehouse employees, even the staunchest critics of non-compete clauses will typically acknowledge that they can — and often do — play a legitimate role in the protection of trade secrets. This is why the FTC’s proposed rulemaking is causing consternation in the intellectual property community.

Any brand owner with an anticounterfeiting program will tell you that one of their biggest frustrations with online enforcement is that the information online marketplaces keep on third-party sellers is not always accurate or complete. Counterfeit sellers will do anything they can to fly under the radar online, often providing false names, addresses, and other contact information in their online marketplace profiles. Accordingly, it is quite common for brand owners to reach a literal dead end in their investigations of third-party sellers. The Integrity, Notification, and Fairness in Online Retail Marketplaces for Consumers Act (the “INFORM Consumers Act”), recently signed into law as part of the Consolidated Appropriations Act of 2023, aims to make it more difficult for counterfeit sellers to fly under the radar by requiring online marketplaces to collect, verify, and disclose certain information from high-volume third-party sellers to consumers.

Inventions are secrets, at least until they are divulged to others. It would be lovely if an inventor could simply tell their secret to the world and receive just compensation in exchange. However, human nature tells us that people are reluctant to pay for something they are using unless someone makes them pay for it. When an inventor files a patent application, the secret of their invention is instantly shared with the world via public disclosure. As a result of the speed with which the inventor’s secret is shared with the world, receiving just compensation from users of that secret is particularly difficult.

The copy writes itself: “Five-Time Woman World Jump Rope Champion Transforms Fitness Industry after Securing Patents.”  However, you’re unlikely to find a glowing profile of Molly Metz on the U.S. Patent and Trademark Office (USPTO) website anytime soon. That’s because, after the fitness industry embraced Molly’s invention as the gold standard for speed jump ropes, the Patent Trial and Appeal Board (PTAB) of the USPTO invalidated the claims of the patents based on prior art from 1978 and 1979. 

It was a rather light district court week for patent filings, with just 24 new cases filed last week—we are starting to see the effects of a depressed rate of filing from IP Edge in the overall numbers (link behind paywall). The week also saw an average number of Patent Trial and Appeal Board (PTAB) filings, all inter partes reviews (IPRs). A number of IP Edge pending disputes settled last week; it looks like the Bell Semiconductor/Hilco Capital suit against seemingly the entire semiconductor industry has started to settle out, with some big names dismissing cases pursuant to settlement, including Kioxia, Nvidia, Micron, and many others—whether pursuant to a bulk license through RPX or some other mechanism is unknown, but it’s likely to be some group deal for so many parties to settle at the same general time in such a far-ranging dispute.

Patent Term Adjustment (PTA) was designed to serve an important purpose – to compensate patentees for time lost during examination due to U.S. Patent and Trademark Office (USPTO) delays. Most industries rely heavily on their patent portfolios to drive business strategies that ultimately impact their bottom line. The impact of patent term is especially acute in the pharmaceutical and biotechnology industries, where companies spend billions of dollars to develop new drugs. For these companies, every day that their patent is in force matters, generating millions in additional revenue. With so much at stake, companies strive to accrue all the patent term they are entitled to under the current statutory regime, including by way of PTA.

In February 2020, ParkerVision filed a patent infringement lawsuit against Intel in Judge Alan Albright’s Waco, Texas, courthouse in the Western District of Texas.  Only three years later, and through the pandemic, today, the case settled all pending matters. ParkerVision still has remaining patent infringement cases in process against TCL, LG, MediaTek and RealTek in Judge Albright’s court.  A settled case is the best way to close a patent infringement dispute. It not only reduces costs for the parties, but it also reduces the court’s burden of a trial. When the parties agree to settle, everyone goes home happy.

Case law has defined prosecution laches as an affirmative defense against an infringement assertion. Specifically, the case law indicates a patent that is being asserted is unenforceable when the patentee caused an unreasonable and unexplained delay in prosecution of the patent. Symbol Tech v Lemelson Medical, No. 04-1451 (Fed. Cir. 2005). There is relatively little case law on the specifics of laches. However, in 2021, the Federal Circuit said: “we now hold that, in the context of a § 145 action, the PTO must generally prove intervening rights to establish prejudice, but an unreasonable and unexplained prosecution delay of six years or more raises a presumption of prejudice”. Gil Hyatt v. Hirshfeld (Fed. Cir. 2021). What does this – or might this – mean beyond the Hyatt case?

Scroll through social media and you’re certain to find countless posts of images generated by artificial intelligence, or “AI.” Tools such as DALL-E 2, Starry AI, Jasper, and the like have exploded in popularity, allowing users to do everything from creating stylized versions of the user’s own photographs, to inputting silly, incongruous prompts like “red headed cow with John Lennon sunglasses,” and receiving almost instantaneous results with no further effort by the user. Users have taken to such websites in droves because they are easy to use, free, and most importantly, fun. The problem: in most if not all cases, the AI obtains its images by “scraping” the internet, obtaining and using massive amounts of copyrighted images to train itself in the meaning of certain words and in the stylistic choices employed in those images.

The 2023 top 100 innovators have been revealed in the second annual Innovation Momentum Report, once again uncovering forward-thinking patent development and showcasing some of the most innovative companies—both big and small. In an increasingly fast-paced and complex modern technological landscape, the report sheds light on the most promising and active players by looking at the dynamics of technology development over the past two years. This year, the list has 27 new entries, highlighting the constant evolution of the innovation landscape and the speed at which technology advances.