Posts Tagged: "intellectual property"

Michael Bynum Names New Defendants in Proposed Amended Complaint to 12th Man Copyright Lawsuit

On November 23, sportswriter Michael Bynum and his publishing label Epic Sports filed a motion for leave  to file a second amended complaint and a proposed second amended complaint in the Southern District of Texas. The filings seek to revive copyright infringement claims filed by Bynum against employees at Texas A&M University for their roles in unauthorized distributions of Bynum’s biography of E. King Gill, a former Texas A&M student who inspired the 12th Man tradition at Texas A&M, by adding several new defendants who were actually responsible for the unauthorized copying at issue in the case.

Patent Experts Urge Kanter to Reject Calls to Scrap Avanci Business Review Letter

A group of 25 experts in intellectual property law sent a letter to Assistant Attorney General (AAG) Jonathan Kanter today in support of a business review letter that the group said, “represented a legally sound and evidence-based approach in applying antitrust law to innovative commercial institutions.” The letter is also a response to an earlier letter sent to Kanter on October 17, 2022, by 28 former government enforcement officials, professors, and public interest advocates that urged the AAG to reconsider the business review letter. The Avanci business review letter was published by the Antitrust Division of the U.S. Department of Justice on July 28, 2020. In the letter, the DOJ said that Avanci’s licensing platform, which plans to license patent claims declared essential to implement 5G in cars, did not harm competition in the industry. Business review letters represent guidance by the DOJ to inform businesses how to best coordinate their practices to ensure they don’t violate antitrust laws.

Federal Circuit: District Court Properly Struck Expert Testimony that Failed to Apply Agreed-Upon Claim Construction

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential opinion affirming a district court order that struck parts of an infringement expert report and also granted summary judgment of non-infringement to Valve Corporation. The CAFC held that it is proper to strike expert testimony that did not rely on the agreed upon claim construction adopted by the district court. Treehouse Avatar, LLC owns U.S. Patent 8,180,858, which relates to a method of presenting data based on choices made by users with respect to characters in a network site, such as choosing clothing and hairstyles for the characters. The case turned on the meaning of “character-enabled (CE) network sites” (“CE limitation”) in the claims, which the Patent Trial and Appeal Board (PTAB) had construed in an earlier inter partes review (IPR) proceeding to mean “a network location, other than a user device, operating under control of a site program to present a character, object, or scene to a user interface.”

Answering the Question, ‘What is the Conservative View of Patent Rights?’

Joe Matal, the former Acting Director of the U.S. Patent and Trademark Office (USPTO), recently posed as a question to those sponsoring H.R. 5874, the Restoring America’s Leadership in Innovation Act (RALIA): “What is the ‘conservative’ position on patents and other intellectual property?” It is an interesting question. What is it about property that makes it property? That’s not a liberal or conservative, or a Democratic or Republican question. Property rights are something everyone learns about early in life when your older sibling grabs your teddy bear and takes it away from you. Property rights are innate in humans. Just about everyone would proffer a similar definition: that’s mine and you can’t take it away – at least not without a fight.

Juno Asks Supreme Court to Reconsider Denial of Petition on Section 112 Question in Light of Amgen Review

Following the denial of Juno Therapeutics’ petition to the U.S. Supreme Court earlier this month, Juno last week petitioned the High Court for rehearing, arguing that the grant of certiorari in Amgen v. Sanofi warrants reconsideration. Juno explained that the issues presented in the Amgen case “are tightly related, and the outcome in Amgen is likely to at least affect, if not be outcome-determinative of, this case.” Juno is asking that the Court grant the petition for rehearing, vacate the denial of certiorari, and hold the case pending the outcome in Amgen.

US Inventor Arguments for Opposing the Pride in Patent Ownership Act Fall Short on the Merits

Last September, a bipartisan pair of Senators introduced the Pride in Patent Ownership Act, which, if passed, would add greatly-needed transparency to our patent system. The legislation would require patent owners to disclose their identity to the U.S. Patent and Trademark Office (USPTO) when a patent issues and whenever it changes hands so that members of the public have easy access to information about who the true owners of patents are. Right now, inventors, businesses, and other interested members of the public often have to undertake time consuming and expensive litigation to determine who owns a patent. As Senator Thom Tillis (R-NC) rightly pointed out when introducing the legislation, “Patents provide a limited term monopoly against the public, and it’s in the public’s interest and benefit to know who owns that monopoly.”

USPTO, Copyright Office Joint Study on NFTs Could Help Dispel Confusion About IP Ownership in Media Content Underlying Digital Assets

On November 23, the U.S. Patent and Trademark Office (USPTO) and the U.S. Copyright Office published a joint notice of inquiry in the Federal Register announcing that the two agencies would be collaborating on a study regarding intellectual property legal issues related to digital assets known as non-fungible tokens (NFTs). The announcement follows the dramatic rise in mainstream attention on NFTs due to their wildly fluctuating value, which has in turn created a great amount of confusion surrounding IP rights to NFTs and the underlying digital files used to create them.

CAFC Says Burden of Reexamination Following Denied IPR Does Not Warrant Mandamus Relief

The U.S. Court of Appeals for the Federal Circuit (CAFC) last week denied a petition requesting mandamus relief to vacate the U.S. Patent and Trademark Office’s (USPTO’s) grant of a request for ex parte reexamination of Sound View Innovations’ U.S. Patent No. 6,708,213 by DISH Network LLC. The ‘213 patent covers a “Method for Streaming Multimedia Information Over Public Networks.” DISH originally petitioned the USPTO for inter partes review (IPR) of claim 16 of the ‘213 patent on the ground that it was anticipated and/or obvious based on two prior art references called Sen and Geagen.

How French and California Contract Law Would Interpret SEP Patent Owner Obligations Under the ETSI Licensing Declaration

In the United States, the issue of whether or not one has complied with a licensing-related commitment made to a standards setting organization is often treated as a matter of contract. As we have written about before (here and here), some implementers wish to interpret such commitments so as not to lose entitlement to fair, reasonable and non-discriminatory (FRAND) licenses despite not negotiating in good faith or, as we like to say, to have their FRAND cake and eat it too. In a recently prepared article, we explore how such an interpretation lines up with basic contract law principles, particularly having reference to the language of the European Telecommunications Standards Institute’s (ETSI) Intellectual Property Rights Information Statement and Licensing Declaration [“the ETSI Licensing Declaration”].

WIPO Report: China Sees Massive Surge in IP Filings Across the Board

Worldwide IP filings increased by 3.6% in 2021, according to a report published November 21 by the World Intellectual Property Organization (WIPO). The increase came during a turbulent time for the world economy, at the height of the COVID-19 pandemic, as well as a global economic downturn. The biggest increase in patent filings was in Asia, where 67.6% of worldwide patent applications were filed. The United States saw a 1.2% decrease in filings and a 1% increase in trademark filings. Trademark applications grew at a much faster rate than patent applications, with a 5.5% in trademark filing activity. Industrial design filing activity also rose by 9.2% with the largest uptick again in Asia. China saw high rates of growth and is a global leader in sheer numbers across all indicators.

What IP Stakeholders are Giving Thanks for in 2022

As we get ready to celebrate another Thanksgiving holiday in the United States, it’s time once again to reflect on the year so far and to look beyond the many challenges facing intellectual property (IP) owners to what there is to be thankful for. Whether it’s people—like Judge Paul Michel, Kathi Vidal, Senator Thom Tillis and Rep. Thomas Massie—or major developments—like the withdrawal of the latest Joint Policy Statement on SEPs and the introduction of legislation to reform patent eligibility law—the commenters below have found a lot of ways to give thanks.

Unauthorized Hamilton Production Underscores Issues with Unlicensed, Infringing Staged Theatrical Productions

This August, the Door Christian Fellowship McAllen Church made some unfortunate headlines after it came to light that the church had produced and staged a performance that made unauthorized use of original works from the blockbuster Broadway musical, Hamilton. By the end of the month, The Door had issued an apology for the unauthorized performances and agreed to pay damages and destroy any recordings of the staged performance in respect of the intellectual property protections of Hamilton’s creators. While this unlicensed and infringing use was quickly dealt with by Hamilton’s legal team, there have been other instances of recalcitrant producers who have only been held accountable for staging unlicensed theatrical works after years of infringement.

NYIPLA Tells Supremes IP Lawyers Need Attorney-Client Privilege for Dual-Purpose Communications

The New York Intellectual Property Law Association (NYIPLA) filed an amicus brief last Thursday in the U.S. Supreme Court in In re Grand Jury. The petition was filed in April this year, presenting the Supreme Court with the question of whether communication involving both legal and non-legal advice should be protected by attorney-client privilege. The question has broad implications for attorney-client privileges, especially for intellectual property lawyers, says the NYIPLA brief. NYIPLA  makes the case that the Supreme Court should adopt “a rule which protects a dual-purpose communication if a significant purpose of the communication is to obtain or provide legal advice.” Currently, the appeals courts are divided as to whether this rule should be adopted versus one that protects communications only if legal advice was the dominant purpose behind the communication.

Jack Daniel’s Will Get Its Shot at SCOTUS Review Against Dog Toy Maker

The U.S. Supreme Court yesterday granted a petition filed in August this year by Jack Daniel’s Properties, Inc. seeking clarification on whether the First Amendment protects VIP Products, LLC, a maker of dog toys that made humorous use of Jack Daniel’s trademarks for commercial purposes, against claims of infringement and dilution. The High Court previously denied Jack Daniel’s petition in January of 2021, and the U.S. Court of Appeals for the Ninth Circuit “summarily affirmed” the district court’s summary judgment ruling for VIP on remand. In its ruling in 2020, the Ninth Circuit said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection, reversing the district court’s initial holding that the toy infringed and diluted Jack Daniel’s marks and remanding the case back to the district court for a determination on the merits of the infringement claim.

SEPs in Europe: From Huawei/ZTE to Apple/Optis, Europe Has Become a Friend to Patentees

During IPWatchdog’s Standards, Patents & Competition Masters 2022 program last week, one panel examined the standard essential patent (SEP) landscape in Europe, which has become decidedly more patent owner friendly than that of the United States in recent years. Beginning with the landmark 2015 decision by the European Court of Justice in Huawei v. ZTE, ([2015] EUECJ C-170/13), European courts have held SEP holders and implementers to account by applying the framework set forth in that ruling, which panelist Inna Dahlin of Valea AB summarized for attendees.