Posts Tagged: "intellectual property"

Last week, the USPTO announced a public release of the Patent Center beta that will eventually replace PAIR and EFS-Web while providing improved access to prosecution histories and related data. The Office has always been on the cutting edge of technology for the Federal government. Their electronic filing system (EFS), Patent Application Information Retrieval (PAIR) system, hoteling, and other technology initiatives have put the Office out front of many government agencies. FY2020 Congressional Justification for the USPTO states that it is the responsibility of the USPTO to “foster[] innovation, competitiveness and job growth in the United States by … delivering IP information and education worldwide.” Open access to the U.S. Patent and Trademark Office (USPTO) data is core to the USPTO’s mission and aligns with the Open Data policies of the Federal government generally.

If you run a business that depends on data to drive success — and what business doesn’t these days? — this tendency of information assets to escape is a major, perhaps existential, risk. Given that those assets are handled by human beings, the management challenge can feel a lot like trying to contain . . . a virus. The metaphor is not perfect. After all, a virus, unlike bacteria, is rarely considered valuable or helpful. But I believe the comparison is apt and useful in many ways, not least as a mnemonic device to help us stay focused on the difficult but necessary discipline of caring for the integrity of the company’s most valuable property, just as we care for our individual health. So stay with me as we look at several main areas of overlap between trade secret management and pandemic response. To begin with, let’s recognize that our concerns are not only about our own information propagating outwards, but also about blocking unwanted information from infecting our data systems. So our control systems are naturally tuned toward containment: keeping our data in and others’ data out.

Yesterday, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Eleventh Circuit’s decision that a state code revision commission cannot claim copyright protection over annotated state code in Georgia et al. v. Public.Resource.Org., Inc. The Court dove into the judicially created “edicts doctrine,” which has not really been explored since the 1800s. The “original works” in question were supplementary annotations accompanying the statutes in Georgia’s Official Code, known as the Official Code of Georgia Annotated (“OCGA”). These annotations and summaries of judicial decisions were owned by Georgia’s Code Revision Commission (“Commission”), although they were originally authored by a division of the LexisNexis Group under a “work made for hire” contract.

The mathematics exception for subject matter eligibility is overbroad because it was improperly justified under the premise that mathematics is like a law of nature. This is absurd because mathematics is everywhere, and excepting mathematics means excepting virtually everything. Recent court decisions declare that “[m]athematical calculations and formulas are not patent eligible,” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161 (2018)(“SAP AM.”), based on older decisions, such as Parker v. Flook, 437 U.S. 584 (1978) (“Flook”) and Gottschalk v. Benson, 409 U.S. 63 (1972) (“Benson”).

The USPTO’s Update on Subject Matter Eligibility of October 2019 (“OCT2019 PEG”) states, “The 2019 PEG defines ‘mathematical concepts’ as mathematical relationships, mathematical formulas or equations, and mathematical calculations,” and “where a formula or equation is written in text format that should also be considered as falling within this grouping.” This means that one can have a mathematical concept without even writing any mathematics. The USPTO can assert this illogical and absurd statement because the justification for the underlying mathematical exception itself is also illogical and absurd.

Today, for the 20th year in a row, we celebrate World IP Day. Today also marks the 80th birthday (after mine, another notable quarantine birthday) of a composer, songwriter, and record producer that has changed the history of music: Giorgio Moroder. Nicknamed the “Father of Disco”, he pioneered electronic music, produced numerous world hits – including some of Donna Summer’s major successes – and later composed film screenplays and scores (and won several awards for that work, including three Oscars). More recently, Moroder, a native of Ortisei, Italy, was honored with and contributed to a song named after him by the acclaimed EDM duo, Daft Punk. Similarly to Moroder, artists and creatives push the boundaries of ingenuity, create worlds for us to get lost in, imagine digital and analog alternative realities to soothe our senses and soul, and blur the lines between art, entertainment and technology. Innovators in all fields question the status quo and pursue a vision in creative art, technology, medicine, business, and all other areas of human knowledge. And while they do so, they touch many lives and, through their collective contribution, impact society as a whole. As our lives have been turned upside down by the COVID-19 pandemic, we recognize more than ever that investing in creativity, in innovation, and in the visionaries has allowed us as a society to cope and fight back with unprecedented tools.

It’s World IP Day! This year, the day will not be celebrated in the traditional fashion; there will be none of the usual panels, receptions, gatherings or educational events that are organized annually to commemorate the holiday, which was launched in 2000 by the World Intellectual Property Organization (WIPO). While some remote panels will be held in lieu of the traditional affairs, there are decidedly fewer organizations participating this year. Here are some of the virtual events, reports and statements focusing on World IP Day 2020— the official theme of which is, “Innovate for a Green Future.”

The Federal Circuit recently vacated and remanded a district court’s grant of summary judgment invalidating patent claims owned by Nevro Corporation (Nevro). See Nevro Corp. v. Boston Sci. Corp., Nos. 2018-2220, 2018-2349, 2020 U.S. App. LEXIS 11170 (Fed. Cir. Apr. 9, 2020) (Before Moore, Taranto, and Chen, Circuit Judges) (Opinion for the Court, Moore, Circuit Judge). The district court found the “paresthesia-free” system and device claims to be indefinite because “infringement of these claims depended on the effect of the system on a patient, and not a parameter of the system or device itself.” Using this reasoning, the district court concluded that a skilled artisan could not identify the bounds of the system and device claims with reasonable certainty. The Federal Circuit disagreed.

This week in Other Barks & Bites: the Supreme Court hands out a pair of IP decisions, holding that willfulness is not required for profits awards in all trademark cases and that institution decisions at the PTAB are not reviewable despite violations of the statutory one-year time bar; the CJEU clarifies EU trademark law regarding the registration of trademarks for products that are solely decorative; INTA asks the full Ninth Circuit to rehear VIP Products v. Jack Daniels Properties, Inc.; the Copyright Office issues rulemaking notices related to the agency’s implementation of mechanical licensing collective activities and other aspects of the Music Modernization Act; global stocks tumble after Gilead halts a clinical trial examining the use of remdesivir to treat coronavirus patients; the USITC decides in favor of Rovi in a Section 337 investigation of Comcast; and the USPTO reports a reduction in Alice rejections owing to the agency’s implementation of revised subject matter eligibility guidelines in 2019.

As COVID-19 continues to rapidly sweep the globe, government agencies at all levels are taking measures to curb the spread of the virus. Private companies have announced plans for and advancements in testing, antivirals and vaccines, leading some members of Congress to raise concerns about whether these medical countermeasures “will be affordable and accessible to the public” in light of companies’ ability to enforce their patent rights and exclude competitors. See Kevin J. Hickey, Cong. Research Serv., LSB10422,  COVID-19 Medical Countermeasures: Intellectual Property and Affordability (March 18, 2020). This, in turn, has led to concerns that the government may appropriate private intellectual property rights in order to combat the virus.

In his second foray into intellectual property law this week, Supreme Court Justice Neil Gorsuch delivered the opinion for a unanimous Court today in Romag Fasteners v. Fossil Group Inc., reversing the Federal Circuit’s August 2017 decision and holding that willful infringement is only one consideration for awarding an infringer’s profits, and that 15 U.S.C. Section 1117(a) of does not articulate a willfulness prerequisite. Most attorneys who weighed in for IPWatchdog welcomed the decision as providing clarity and being pro-IP. Here is what they had to say.

Circuits have long split over whether willfulness is required before a trademark infringer’s profits may be awarded. Section 1117(a) of the Lanham Act allows an award of profits “subject to principles of equity.” In Romag v. Fossil, the jury awarded Fossil’s $6.7 million in profits to Romag to deter infringement, even though the jury found only 1% of those profits were attributable to the infringement. However, because the jury found Fossil infringed “in callous disregard” but not willfully, the Federal Circuit refused to allow the award of Fossil’s profits. The Supreme Court disagreed, reversing the Federal Circuit in today’s decision. Instead, “mental state” or “mens rea” is only a consideration for an award of the infringer’s profits, albeit an “important” or “highly important” consideration. The Court gave nodding mention to the substantial competing policy-based arguments submitted by both parties and amicus briefing and fleshed out further at oral argument. But ultimately, the decision stuck closely to the statutory language, finding Section 1117(a) could not support the weight of a willfulness prerequisite.

The United States Patent and Trademark Office (USPTO) Chief Economist today released a report, “Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International,” outlining the effect of recent USPTO actions on patent eligibility determinations in certain technology areas most affected by the Alice decision. According to a USPTO press release, the conclusion is that these actions “have brought greater predictability and certainty” to these tech areas. “We have heard anecdotally from both examiners and applicants across the entire spectrum of technologies that our 2019 guidance on Section 101 greatly improved the analysis in this important area of patent law,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO in the press release. “The Chief Economist’s report now confirms this general perception, especially with its critical finding that uncertainty decreased by a remarkable 44%.” 

On appeal from the U.S. District Court for the District of Delaware, the U.S. Court of Appeals for the Federal Circuit (CAFC) held on April 21 that the district court erred in determining that DISH Network LLC and Sirius XM Radio Inc. (collectively, DISH and SXM) were not prevailing parties for purposes of collecting attorneys’ fees under 35 U.S.C. § 285. In particular, the CAFC held that the Appellant’s were prevailing parties before the district court based on a judgment of noninfringement, although later vacated, and a holding of invalidity before the USPTO Patent Trial and Appeal Board (the Board).

In an energetic dissent in Thryv, Inc. v. Click-to-Call Tech., LP, 590 U.S. __ (Apr. 20, 2020), U.S. Supreme Court Justice Neil Gorsuch provides a compelling defense of patent rights, and he champions a patent owner’s ability to obtain judicial review of certain threshold administrative decisions from the Patent Trial and Appeal Board (PTAB). But while Justice Gorsuch’s insightful analysis is receiving accolades from many in the patent community, it failed to garner any support among his Supreme Court colleagues, save for one, Justice Sotomayor.

The traditional wisdom—that patent suits rise and fall with the economy—seems backward. With some data forthcoming on that point, both during the last downturn and this one, patent filings haven’t slowed much, if any. Last week, 22 Patent Trial and Appeal Board (PTAB) petitions were filed—one post grant review (PGR) and 21 inter partes reviews (IPRs)—just a few more than last week and down substantially now and on the year from the highs of a few years ago. But patent suits haven’t slowed, with 77 complaints nationwide this week, a docket chock full of repeat offenders, mostly comprising NPE aggregators like Oso IP and Equitable IP, with the occasional new campaign listed below or biopharmaceutical litigation, as listed below.