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Posts in Guest Contributors

Copyright and Translated Content: Who is the Creator?

Copyright law protects artistic works. That includes literary pieces like novels, poems and other literary pieces. The original author is the one who owns the copyright of the piece. Translation raises an interesting question when it comes to copyright. Who will own the copyright of the translated work? Does it belong to the individual translator, the translation company, or to the author of the original work? Because copyright laws protect original works, translations occupy a gray area. Many would consider it to be a creative process, like the translation of poetry and other literary pieces. But then again, there are those who would contend that translation is not a creative process at all, or at least not at the same level as writing a novel. The main ideas of the work are already in place and it just has to be expressed in a different language.

Claim Construction in Bankruptcy Court? Revisiting Vacatur in Patent Litigation

While many patent litigators have no plans to litigate in bankruptcy court, it is a possibility if the infringer of a client’s patent files for bankruptcy. The United States Bankruptcy Court for the Eastern District of Wisconsin recently conducted a Markman hearing. How did that happen?  After being sued for patent infringement in district court, the alleged infringer sought refuge in the bankruptcy court, staying the district court litigation. The plaintiff then filed a claim in the defendant’s bankruptcy case, which ultimately triggered the bankruptcy court’s jurisdiction. While rare, other bankruptcy courts have conducted claim construction proceedings. As discussed herein, the bankruptcy court ultimately granted a joint request for vacatur, prompting us to revisit the doctrine of vacatur.

It’s Time to Address ‘Patent Mercenaries’—and the USPTO Already Has the Tools

In response to intense lobbying for patent litigation reform, Congress was convinced that a substantial amount of district court patent litigation involved “poor quality” patents that were clearly invalid. Images of extortionist patent trolls were widely portrayed as a primary threat to U.S. innovation. The high cost of patent litigation, years to reach a judicial resolution and reliance on lay juries to determine highly technical issues were cited as evidence of a broken system. In response, Congress passed the Leahy-Smith America Invents Act (AIA) in 2011…. The current IPR system as implemented has caused severe damage to an important segment of our innovation community. Congress instructed the USPTO Director, in 35 USC§ 316(b), to “consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” It is time for the Director to reevaluate the effect of IPRs.

The Use of ‘For the Avoidance of Doubt’ in IP License Agreements: Please Stop!

The phrase “for the avoidance of doubt” must be a Microsoft Word shortcut that comes standard in some legal IT package. Why do we say that? Well, we recently received an IP licensing agreement from an attorney working at a large law firm located in a large city, serving a large client, and presumably charging a large hourly fee. It seemed as though every 50th word in the agreement was “for the avoidance of doubt.” Now, this is not a personal attack on this particular attorney or law firm. We have seen the phrase used way too often and do not understand why. Perhaps this is just a phrase that makes agreements sound more legalese or maybe the attorneys in question think it makes certain provisions in the agreement more “airtight?” Nonetheless, we ask all of you to please stop!

Is Your Corporate IP Department a Trick or a Treat? Beware of Spooky Costume Choices

CEOs, general counsels, and other senior leaders in a corporation often take a hands-off approach to IP strategy and execution, heavily delegating these functions to in-house IP counsel and related team members. This isn’t surprising given the esoteric nature of many IP matters and the extraordinary demands on senior leaders coming from all corners. The trust placed in corporate IP departments may be substantial, carrying with it largely unfettered discretion to set the IP agenda. Unfortunately, those outside the IP field may feel ill-equipped to verify that such trust is well placed. The worst-case result may be misaligned IP and business strategies, enormous spend, and missed opportunities.

Acquisition Contamination: The Mythology of the ‘Clean Team’

Have you ever shopped for something dangerous? Back in the 1950s, my mother wanted to buy a pressure cooker to make dinner faster (and use cheaper cuts of meat). That wasn’t an easy decision, because the early models had a reputation for occasionally exploding (there was no Consumer Product Safety Commission then). My father, a self-taught steam engineer, was skeptical that a kitchen appliance could safely contain double the normal atmospheric pressure. But Mom did her homework, researching what the problems were (usually a single pressure valve prone to clogging) and finding cookers with redundant pressure relief systems. It worked for years, and no one went to the hospital. Companies shopping to buy other companies, or to acquire a license to their technology, also entertain risk. That’s because in the process of interviewing potential targets they can become exposed to highly valuable trade secrets. If any particular transaction doesn’t go forward, but the shopper implements similar technology, the disappointed seller may file a lawsuit claiming misappropriation.

Patent Filings Roundup: Intellectual Ventures Jumps Stalled Car Campaign; DJ against Mystery Sons of Innovation LLC; Another Hundred Suits Dismissed

It was a (relatively) light Patent Trial and Appeals Board (PTAB) and district court week, with 26 PTAB (two post grant reviews and 24 inter partes reviews) and 48 new district court complaints, with the number of dismissals or closed cases in district court again reaching nearly 100 for the third week in a row—I’m unsure exactly, though I suspect it has something to do with a fair number of cases being voluntarily dismissed and refiled in other jurisdictions following renewed vigor in venue analysis after the Federal Circuit’s recent round of mandamuses of Judge Albright’s cases (he’s up to 17 mandamuses on the issue of venue, mostly over the past calendar year by my count, which as far as I know is a single-judge record).

Financial Institutions Face Fork in Patent Road

Large banks have a reputation for being slow to change. However, in the past decade, the financial services industry has seen the wholesale adoption and implementation of new technology as firms realize that consumers and businesses are increasingly demanding a strong digital experience. In 2007, Bank of America was one of the first financial institutions to offer a mobile banking application and since then, the rest of the industry has followed suit. Now, consumers could not go without their banking apps ­– imagine going to the bank to deposit a check.

IP/Antitrust Policy Changes are Afoot in the Biden Administration’s DOJ

The intersection of intellectual property (IP) and antitrust law is again a hot debate after a recent speech by the U.S. Department of Justice Antitrust Division’s (“DOJ” or “Division”) Economics Director of Enforcement, Jeffrey Wilder, titled Leveling the Playing Field in the Standards Ecosystem: Principles for a Balanced Antitrust Enforcement Approach to Standards-Essential Patents. Before we dive in on the key takeaways from the speech, and our thoughts on potential ramifications, it bears briefly mentioning how we got here.

Twitch Data Breach is Another Example of Why Cybersecurity is a Must for all Businesses

Just as we thought Facebook’s six-hour outage could be the biggest cybersecurity news in October, hackers were able to expose more than 100GB of data from Twitch. The livestreaming platform – purchased by Amazon for $970m in 2014 – is understood to still be trying to figure out how it happened. While this investigation unfolds, security experts are already warning of the potentially serious consequences for the business.

Alice-Insanity (Part One), or Why the Alice-Mayo Test Violates Due Process of Law

The Fifth Amendment of the U.S. Constitution guarantees, inter alia, that no person shall be deprived of property (including intellectual property), without due process of law. For instance, it is settled law that a federal statute may be so arbitrary and capricious as to violate due process. Similarly, it is settled that an administrative agency, e.g., the U.S. Patent and Trademark Office (USPTO), cannot escape the due process of law requirement when processing patent applications. In theory (less in reality), due process of the law extends to judicial as well as political branches of government, and judgments that violate constitutional limitations and guarantees are void or voidable.

Assessing How Much an Alzheimer’s Drug is Worth

On June 7, 2021, the U.S. Food and Drug Administration (FDA) gave the green light to Aducanumab, a drug developed by Biogen to treat early stage Alzheimer’s, despite the controversies surrounding its efficacy. Biogen stock price increased 38.3% on the day, adding $16.5 billion to the company’s market value. The news rippled across the pharmaceutical industry and lifted stock prices of most Alzheimer’s drug developers. As an example, Eli Lilly stock price jumped 10.2% on June 7, or a hike of $18.6 billion in market cap, because the company also has a similar drug candidate. Subsequently, as the controversies over the Aducanumab approval deepened, Biogen had lost $7 billion in market value by September 9. With all of these multi-billion-dollar numbers, one can’t help but wonder: how much is an Alzheimer’s drug worth? This article tries to assess the market value of an Alzheimer’s drug. It first estimates the implied values of Alzheimer’s drugs by looking into stock market reactions to major events associated with Biogen’s Aducanumab and Eli Lilly’s Donanemab. As a sanity check to the values derived from the stock market, a discounted cash flow (DCF) analysis is conducted to evaluate whether the stock market valuations are rational.

Reexamining Three Preconceived Notions of SEPs as the 5G Patent Wars Ignite

5G—the next generation of telecommunications standards provided by the Third Generation Partnership Project (3GPP)—began implementation in 2019. It boasts significant technical benefits over prior generations, including higher speeds, greater bandwidth, lower latency, and larger coverage areas. Unlike previous 3GPP standards, 5G is not limited to cellular phones. Rather, 5G will support a plethora of technologies ranging from Enhanced Mobile Broadband to Massive Internet of Things. Accordingly, 5G will support a tremendous amount of economic activity: by 2026, 5G will have 3.5 billion subscribers and will account for 84% of mobile subscriptions in the United States. By 2035, 5G is expected to underly $13.1 trillion in global economic activity, accounting for 0.2% of the 2.7% projected annual global GDP growth.

Diversity is Just Good Business

Asserting that diversity has made significant strides within today’s legal profession would, unfortunately, not be a winning case. And while it’s a hot topic today, the true importance of diversity, equity and inclusion seems to be overlooked. The fact of the matter is, embracing diversity is just good business. The practice of law is advanced by a diverse team. With diversity comes quality legal innovation. We need to manage conscious and unconscious bias to be open to people from all demographics, ethnicities, genders, orientations, educations, perspectives and backgrounds. Instead of a homogenous group of professionals with a singular approach, with a diverse team you gain the benefit of differential skillsets, outlooks, approaches and ways of processing that make a team stronger, bringing varied insights to cultures, systems, procedures and policies.

How Technology is Reshaping the IP Management Industry

There’s hardly any area in entrepreneurship today that deals with innovation more than intellectual property rights protection – in fact, cutting edge technology and inventions are at the core of the IP industry. However, this doesn’t necessarily mean that the real-life practices, processes and management in the industry are as technologically advanced –it’s actually quite the contrary, or, at least, has been until recently.