Posts in Litigation

We live in a world where data has become an increasingly valuable asset and huge companies are built on the collection and analysis of publicly available data. Yet, there is no federal statute that directly protects this type of information or even directly addresses how this information should be treated. Instead, businesses are often forced to rely on the Computer Fraud and Abuse Act (CFAA) in order to protect this valuable asset or commodity, which originally only provided criminal sanctions and was enacted to address computer hacking. Most recently, the Ninth Circuit in hiQ Labs, Inc. v. Linkedin Corp., 938 F.3d 985 (9th Cir. 2019), addressed under what circumstances a company may legally “scrape” data from another company’s website. There, the court determined on hiQ’s motion for preliminary injunction that “scraping” publicly available information from LinkedIn likely is not a violation of the CFAA because the LinkedIn computers are publicly accessible and hiQ thus did not access the computers “without authorization” as required by the CFAA. Under these circumstances, the court determined that it did not matter that LinkedIn had sent a cease and desist letter to hiQ prohibiting such access. This is a potentially very important decision for companies on both sides of this issue and for the general public, at least in the Ninth Circuit.

On November 25, former Director of Homeland Security Michael Chertoff wrote an opinion piece in the Wall Street Journal that chastised the Department of Energy for filing an amicus brief on behalf of Qualcomm in a case that can only be properly described as the ongoing persecution of Qualcomm at the hands of the Federal Trade Commission (FTC). What Chertoff fails to state, however, is that not only has the Department of Energy come out in support of Qualcomm, but so too has the Department of Justice, as well as many others, including former Federal Circuit Chief Judge Paul Michel.  Chertoff also conveniently fails to mention the genesis of the Qualcomm case; namely that it was filed by the FTC several days prior to the end of the Obama Administration at the behest of Apple.

On Thursday, December 12, the U.S. Court of Appeals for the Federal Circuit issued a decision in Techtronic Industries Co. Ltd. v. International Trade Commission in which the appellate court reversed a final determination from the International Trade Commission (ITC) that garage door opener products sold by Techtronic violated a patent owned by The Chamberlain Group. The Federal Circuit found that the ITC erred in its construction of a claim term during its Section 337 investigation of Techtronic. This appeal stems back to a final determination issued by the ITC in March 2018  where the agency found that Techtronic infringed upon multiple claims of U.S. Patent No. 7,161,319, Movable Barrier Operator Having Serial Data Communication. It covers an improved garage door opener having a motor drive unit and a wall console for closing and opening a door. Both the motor drive unit and the wall console have microcontrollers that are connected via a digital data bus. The invention makes use of passive infrared detectors to detect heat from humans in the vicinity to determine when to illuminate the wall console for better sight of the garage door switches.

Five years after the last of the four decisions in patent eligibility doctrine by the Supreme Court—creating what is now referred to as the Alice-Mayo framework—the impact of this upheaval in the patent system has become even more clear. Ongoing court decisions and new data confirm that the Alice-Mayo framework has wrought an unsettling revolution and sowed uncertainty in what former U.S. Patent and Trademark Office (USPTO) Director David Kappos has referred to as the “the greatest innovation engine the world has ever known.” As policy debates on subject matter eligibility ramped up this past year, it is time to return back to the original dataset created by Robert Sachs and David Kappos that we presented in Turning Gold to Lead and provide an update.

In November, the Federal Circuit issued an opinion reversing the Patent Trial and Appeal Board’s (the PTAB or the Board) decision that claim 8 of IPR Licensing Inc.’s (IPRL) wireless communications patent—U.S. Patent No. 8,380,244 (the ‘244 Patent)—was unpatentable as obvious. The Board’s obviousness finding as to claim 8 was erroneous as it relied on a prior art reference that IPRL could neither anticipate nor rebut. Furthermore, its finding was, for the second time, unsupported by substantial evidence. See In re IPR Licensing, Inc. (Fed Cir. Nov. 22, 2019) (Before Newman, O’Malley, and Taranto, Circuit Judges) (Opinion for the Court, O’Malley, Circuit Judge).

Torontonians may have accepted the loss of Kawhi Leonard, but another Raptors asset is still at risk: their newest logo. As detailed here, the Raptors are tipping off against energy drink company, Monster, who allege the Raptors’ logo—featuring a clawed-up basketball—is confusingly similar to their own claw-mark logo. Since first filing their United States trademark opposition suit in 2015, Monster has continued their court battle against the Raptors for the last four years with no known resolution to date. Monster has a whopping 176 trademarks active in Canada at this time. Their most recognizable and widely used mark contains three jagged vertical gashes, resembling those from a claw, in the shape of the letter M. Since 2002, Monster has used the claw-like logo on everything from their beverage products, to event sponsorships, to clothing. The Raptors, on the other hand, have only been using their clawed-up basketball logo since 2014, when they underwent a brand redesign, and do not own a federal trademark registration for the rebranded mark in Canada.

The Supreme Court ruled in Peter v. NantKwest today that the U.S. Patent and Trademark Office (USPTO) cannot recover the salaries of USPTO attorneys and paralegals who work on civil actions against the USPTO Director in the Eastern District of Virginia. The Court held that the language of Section 145 of the Patent Act, which says that applicants must pay all the expenses of the proceedings for a civil action, “does not overcome the American Rule’s presumption against fee shifting.” The USPTO argued that the Federal Circuit’s en banc 2018 decision holding “all expenses” does not include “expenses that the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation,” is inconsistent with the ordinary meaning of  “expenses” and Section 145’s “history and purpose.”

The Supreme Court heard oral arguments on Monday in Thryv, Inc. v. Click-to-Call Technologies. The case asks the nation’s highest court whether 35 U.S.C. § 314(d)—which states that decisions to institute inter partes review (IPR) proceedings shall not be appealable—permits appeals of PTAB institution decisions based upon 35 U.S.C. § 315(b)— which states that IPRs won’t be instituted if the patent owner served the petitioner with a complaint for patent infringement more than one year prior to the petition. The U.S. Court of Appeals for the Federal Circuit ruled in August 2018 in a panel rehearing that the Patent Trial and Appeal Board (PTAB) had “committed legal error” in rendering its determination that an IPR petition challenging claims of Click-to-Call’s patent was not time-barred under Section 315(b). All 12 judges joined a footnote finding that the Section 315(b) time bar applies even when the earlier infringement action had been voluntarily dismissed without prejudice. Here is what those who have reviewed the transcript of Monday’s oral arguments had to say

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential public opinion affirming the District Court for the District of Delaware’s grant of summary judgment of noninfringement for Donghee America, Inc. and Donghee Alabama, LLC (Donghee). The CAFC held that the summary judgment ruling was consistent with the claim construction and supported by the facts on the record. A sealed opinion was delivered on November 21.

The plaintiff, Plastic Omnium Advanced Innovation and Research (Plastic Ominum), owns two patents for blow molding plastic fuel tanks, U.S. Patent Nos. 6,814,921 (‘921) and 6,866,812 (‘812). The patents outline a system to manufacture the tanks in a manner that allows accessory components to be installed without damaging or removing part of the tank’s wall. The ‘812 patent describes a method in which a hollow plastic tube, called a parison, is extruded, formed, and then cut by a blade at the exit of the extruder. The dispute arises out of the ‘921 patent’s description of an “extruded parison” limitation.

Athena Diagnostics today filed its reply brief to Mayo Collaborative Services at the Supreme Court in the closely-watched petition asking the High Court to clarify U.S. patent eligibility law. The reply reiterates the points made in Athena’s petition for certiorari and dismisses Mayo’s argument in November that “any further action regarding the patentability of medical diagnostic claims such as Athena’s that employ conventional, known techniques should and does rest with Congress.” The reply comes three days after the United States Solicitor General recommended that SCOTUS grant cert in Athena or “another such case”, rather than in Hikma Pharmaceuticals v. Vanda Pharmaceuticals.

On November 27, briefing concluded at the Supreme Court with the filing of Fossil’s respondent’s brief in Romag Fasteners, Inc., v. Fossil, Inc., et al. The final briefing sets the stage for the Court to hear the case on January 14, 2020. The Court will hopefully resolve a current Circuit split on the availability of disgorgement of profits as damages for trademark infringement. Currently, the First, Second, Eighth, Ninth, Tenth and D.C. Circuits all require willful infringement before allowing disgorgement of an infringer’s profits (the First Circuit requires willfulness if the parties are not direct competitors and there is also some disagreement on where the Eighth Circuit falls on the issue). The Third, Fourth, Fifth, Sixth, Seventh and Eleventh Circuits all allow for disgorgement of profits without willful infringement. There has been a Circuit split for some time on this issue and the Supreme Court previously denied certiorari on similar cases but the Court is now set to resolve the split.

The United States Office of the Solicitor General has filed its brief in response to the Supreme Court’s March request for views in Hikma Pharmaceuticals v. Vanda Pharmaceuticals. The December 6 brief says that the Federal Circuit correctly held the relevant claims of Vanda’s patent-in-suit eligible, and that the case “is not an optimal vehicle for bringing greater clarity” on the topic of Section 101 law since the CAFC arrived at the correct result. Instead, the High Court should grant certiorari in a case like Athena Diagnostics v. Mayo Collaborative Services, in which the order denying en banc rehearing “was accompanied by multiple separate opinions articulating different understandings of Mayo and seeking clarification from this Court.”

On Monday, December 9, the U.S. Supreme Court will hear oral arguments in Thryv, Inc. v. Click-to-Call Technologies, LP. The case, which has gone through multiple name changes since its original appeal from the Patent Trial and Appeal Board (PTAB), will ask the nation’s highest court whether 35 U.S.C. § 314(d), which states that decisions to institute inter partes review (IPR) proceedings shall not be appealable, permits appeals of PTAB institution decisions based upon 35 U.S.C. § 315(b). Section 315(b) states that IPRs won’t be instituted if the patent owner served the petitioner with a complaint for patent infringement more than one year prior to the petition. To summarize the lower court proceedings in this case, the patent-at-issue was first asserted against Keen Inc. by Inforocket.com in 2001 in a case that was voluntarily dismissed. Click-to-Call acquired the patent and asserted it in 2012 against Ingenio, a company formed through a merger of Keen and Inforocket.com. Ingenio filed for an IPR petition and Click-to-Call challenged it based on the Section 315(b) time-bar and the former suit against Ingenio’s predecessor. The appeal reached the Supreme Court, where it was remanded in June 2016 in light of Cuozzo Speed Technologies v. Lee. Most recently, the U.S. Court of Appeals for the Federal Circuit rendered a decision last August where all 12 Federal Circuit judges joined a footnote finding that the Section 315(b) time bar applies even when the earlier infringement action had been voluntarily dismissed without prejudice.

Businesses often resort to placing keywords in the html code of a web page, meta tags, or in contextual advertising templates for promoting their products on the internet. And in many cases, rivals successfully recover compensation from competitors who use someone else’s trademark to promote their products. But the use of other people’s trademarks is not always intentional. Recently, a Russian entity proved that there was no infringement of intellectual property rights when a trademark that was similar to another mark had been included in an advertisement by a web service. In this landmark case, the courts of all instances, including the Supreme Court, reaffirmed that key words that are automatically generated in search systems cannot infringe as defined by Russian intellectual property law. The Arbitration Court of the Stavropol region found no violations because the search results were not dependent on the actions of the defendant, were technical, and were not aimed at signifying the goods on the internet.

This week in Other Barks & Bites: the U.S. Supreme Court hears oral arguments over copyright status of the Official Code of Georgia Annotated; the Federal Circuit remands Ericsson appeal to calculate release payment in patent license; Apple, Ford and others urge the USPTO to retain policy against injunctions on companies practicing SEPs; Huawei asks the Fifth Circuit to undo the FCC’s ban preventing it from supplying U.S. networks; Sergey Brin and Larry Page relinquish executive duties at Google; U.S. antitrust regulators explore Amazon’s cloud business; Washington politicians send letter to ALI over Copyright Restatement Effort concerns; and Qualcomm challenges Judge Koh’s class action certification at the Ninth Circuit.