Posts in IP News

In 2011, ReDigi Inc. introduced technology that effectively attempted to establish a secondary market for “used” digital music files, where owners who had legally downloaded music files from iTunes could sell the music that they no longer wanted.  In a nutshell, the system allowed the owner of a digital file to transfer the music to ReDigi’s cloud storage locker, from which ReDigi could then sell it to a willing buyer for a lower price than the cost of an “original” purchase from the iTunes Store.  When a sale was made, Redigi would retain 60% of the sales price, while the seller and artist got 20% each. Although the process of transferring a file from an owner’s personal computer to ReDigi required that it be reproduced on ReDigi’s server, the system removed the file from the owner’s personal computer as the file was moved.  Capitol Records, the copyright owner of many music files sold over the ReDigi system, sued ReDigi for copyright infringement, alleging that the company reproduced and distributed its copyrighted works without permission.

The media and political debate continues to rage: should new obligations be put on online platforms and other internet intermediaries to try to limit the availability of unlawful content online, and if so what should those obligations look like?… The combination of proposed Article 13 of the draft Copyright Directive and the Commission’s latest Communication will lead some to conclude that Europe is indeed moving away from protecting internet intermediaries. It certainly appears that the two developments would place a much greater onus on platforms than is currently the case. A fuller picture will be known in May 2018, when the Commission says the work of ensuring “swift and proactive detection and removal of illegal content online” will be complete, and the Copyright Directive in final form. But the direction European policy makers are heading in is already evident.

The modern public rights jurisprudence flows from Atlas Roofing in 1977 to Stern in 2011. Although the case law does not provide a straight line, there is a consistent pattern illustrating the clear constraints of administrative agency adjudication. These constraints include consent of the parties, due process and review by Article III courts. Without these elements, according to a continuous line of Supreme Court jurisprudence, administrative proceedings are illegitimate and unconstitutional. Stern is the governing precedence on the issue of the public rights doctrine, with the composition of the Court today substantially identical to that of the Stern Court.

This case was not your typical “cola war”, but rather involved TWIST, the well-known carbonated beverage brand which has been available in South Africa since the 1970s (originally as LEMON TWIST). Atlantic is the proprietor in South Africa of the TWIST, LEMON TWIST and DIET TWIST trade marks in relation to non-alcoholic drinks falling in class 32. PepsiCo applied to register the trade marks PEPSI TWIST and a PEPSI TWIST label, also in relation to non-alcoholic beverages in class 32… In finding in favor of Atlantic in the opposition, the Court felt it necessary to only rule on the issue of confusing similarity, ie. whether the proposed PEPSI TWIST trade marks were sufficiently similar to Atlantic’s trade marks to create a likelihood of deception or confusion.

IP partner, Nick Aries, who is currently based in Bird & Bird’s London office, along with Stefano Silvestri, partner and co-head of Bird & Bird’s International Corporate Group based in Milan, will relocate to San Francisco, giving US clients greater access to Bird & Bird’s international expertise in the same time zone.

Native American tribal sovereign immunity thwarts both of these dilatory infringer tactics and repositions the negotiation to where it needs to be – outside of the courthouse. The tribe can inform detailed information to the infringer of their infringement and offer to enter into licensing negotiations without fear of being subjected to a DJ Action. Thus, the tribe can inform the infringer of their infringement and unless the tribe sues the infringer, the infringer will not be able to play the litigious gamesmanship or file the unending and procedurally unfair PTAB procedures. In sum, sovereign immunity equalizes the bargaining power between the inventor and the infringer and sets the negotiation table fairly.

Today (TTOs) are increasingly being run by professionals who are experienced in startups, licensing, monetizing and have tremendous depth of technical knowledge in a variety of fields. But they are all waging a losing battle in an industry where 73% of the offices are losing money and an additional 16% just breakeven. It is not because of the efficiency of these offices, it is because of the underlying business model… But the impact of technology transfer on the US economy has been enormous. Since 1980 more than 5,000 startups have been created. From 1996-2013 technology transfer has contributed $518 billion on the US gross domestic product, and $1.1 trillion on the US gross industrial output.

Liquidity in markets for cryptocurrencies like bitcoin is opening a new door for musicians and athletes to issue digital tokens in exchange for money. The tokens are validated by blockchain, a public ledger used for the authentication of digital currency transactions, and backed by copyright, trademark or other IP assets… According to Naraghi, blockchain specifically is critical to the securitization of IP because it guarantees the validity of a transaction by recording the transaction on a main centralized register as well as a connected publicly distributed system of registers. The fact that data is embedded within a public network and updated with each transaction promotes transparency and prevents modification or corruption.

A multitude of changes to patent law and practice have altered the face of patent litigation in America. From patent venue decisions in district courts that seem to be inconsistent with TC Heartland, to Indian Tribes acquiring patents and asserting sovereign immunity, the patent enforcement and defense landscape has changed dramatically over the past few months. Amidst these changing times, please join Gene Quinn for a free webinar webinar discussion – Hot Topics in Patent Litigation – on Thursday, October 12, 2017, at 12pm ET. Gene will be joined by former ITC Commissioner F. Scott Kieff and Keith Grady, Chair of IP and Technology Litigation at Polsinelli.

On May 22, 2017, in TC Heartland LLC v. Kraft Foods Group Brands, LLC, 137 S.Ct. 1514 (2017), the Supreme Court held that patent venue is controlled exclusively by 28 U.S.C. § 1400(b), which restricts venue in patent cases to (1) where the Defendant resides, or (2) where the Defendant commits an act of infringement and has a regular and established place of business. The decision was immediately hailed by commentators as a significant break with past precedent… Despite the common perception of practitioners that the TC Heartland decision changed the law of venue in patent cases, the majority of district courts to address this issue have come to the opposite conclusion, finding that the decision merely reaffirmed existing law and could not excuse the failure to raise the defense earlier. The reasoning of these decisions is questionable, as is the refusal of these courts to recognize how dramatically TC Heartland changed the landscape for patent litigation.

On September 22nd, a reply brief for appellant Cascades Projection LLC was filed to the U.S. Court of Appeals for the Federal Circuit in a case over the validity of patents covering projector technologies which were invented by Gene Dolgoff, the creator of the Star Trek Holodeck. The appeal against Japanese tech conglomerates Epson and Sony asks the Federal Circuit to decide whether the Patent Trial and Appeal Board (PTAB) erred in invalidating patent claims held by Cascades Projection and whether the PTAB acted in a manner which violated Cascade Projection’s right to due process under the U.S. Constitution.

Do you feel fatigued by the long hours, demanding clients and little sleep?   At points in our careers, many lawyers feel like they don’t have a life and that their work defines them.   This is understandable given the demands of the job and the high fees clients pay for legal services.   Yet, you must find ways to recharge and maintain your momentum for the work… Successful people stay focused and attack the challenge at hand, while enjoying family, friends and their surroundings. This is difficult to achieve if you are too tired and bored with your job. You can develop ways to supercharge your career and make certain that you are on the path to continued success and happiness for the long-term.

A trio of experienced patent partners and their team are making the move to Womble Carlyle’s new Boston office.  Danielle Herritt, Deborah Vernon, Ph.D., and Cristin Cowles, Ph.D., and their team, join an established Womble department of more than 70 intellectual property attorneys in all areas of patent, trademark, copyright and related litigation and transactions.  The firm, a larger general practice business firm, was established more than 140 years ago.

When drafting a patent application it is always the best policy to never assume anything. It is dangerous to assume that the reader will fill in any ambiguous holes in the manner you desire, and as here, if what you literally say is clear you run the very real possibility that an assumption on your part will wind up meaning something very different than you intended because you did not take the time to go the extra step to remove all doubt.