Posts in Guest Contributors

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.

Recently, Netflix released a documentary titled, “The Most Hated Man on the Internet,” which is about anti-revenge porn activists and their efforts to take down the website, IsAnyoneUp.com. The site was founded by Hunter Moore and allowed anyone to anonymously upload nude photos with social media handles or to submit sexually explicit photos of others without their consent. The documentary follows Charlotte Laws, whose daughter’s photos were shared on the site, as she launches a campaign to shut it down.

Intellectual property is the primary reason most companies are valuable today, but making investments in inventions and patents isn’t well-understood. As creators develop a roadmap for profiting from their output, understanding the mechanisms for valuing and monetizing intellectual property is crucial. To tease out the intersection of startup funding, intellectual property and litigation, in Episode 8 of Season 2 of his podcast “Understanding IP Matters,” Bruce Berman interviews Efrat Kasznik, president of Foresight Valuation Group, and Adam Gill, founder and managing director of Chicago-based GLS Capital, who are leaders in the field of IP valuation, monetization and litigation funding.

It was a relatively average week for patent filings, with 58 district court complaints and 19 new Patent Trial and Appeal Board petitions filed—that’s a tad low—all inter partes reviews (IPRs). There were more fake meat IPRs filed against Impossible Foods by Motif Foodworks; no discretionary denials last week; lots of frequent litigants saw IPRs instituted against asserted patents this week; unknown Qualserve Solutions LLC sued Samsung on what appears to be standard-essential LTE networking functions, though it’s unclear how handsets would exactly infringe; AGIS and Verizon appear to have settled; Speir Technologies [Magentar Capital] went down the line and hit TCL (after reportedly offering a five-year RPX license to settle all Magnetar suits with their members).

Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights. Responses to this request are due by this Thursday, February 2, 2023. Patent owners, especially small businesses and independent inventors, need two things of the patent system: 1) Reliability/believability. We need patents that are respected when they are issued. We do not want any doubt about their validity. 2) Flexibility. We use many different strategies during patent prosecution. Many of our strategies reflect the startup-nature of our inventions, where we are constantly working on the product-market-fit. We may need several bites at the apple to effectively protect our invention. The Request for Comments suggests several different changes to patent prosecution, none of which address small companies’ needs.

Foreign filing licenses – they’re surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the United States, require inventors to receive special permission to file with patent offices outside of the inventor’s …or invention’s… country. A foreign filing license is a government issued document that represents this permission for inventors and companies to file in foreign countries. Failing to receive this permission can come with serious ramifications including fines, patent revocation, and even imprisonment! Why so serious? Well, like with most matters of foreign export compliance, it comes down to each nation’s strong desire to protect its own security and economic interests. Allowing ideas to cross borders comes with the risk of the unauthorized exportation of technologies and sensitive information that could have implications for military applications, national security, and state secrets.

Earlier this month, patent owner Cellspin Soft filed a motion for recusal  under 28 U.S.C. § 455 seeking the vacatur of a summary judgment order entered in the Northern District of California by U.S. District Judge Yvonne Gonzalez Rogers releasing several defendants from infringement liability, including Fitbit. Cellspin Soft’s motion points to several financial interests between Judge Gonzalez Rogers and Fitbit’s parent company Google, including business relationships developed by Judge Gonzalez Rogers’ husband through McKinsey & Company, as requiring recusal under Section 455, a statute that was recently raised by a petition for writ denied last December by the U.S. Supreme Court.