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Posts Tagged: "infringement"

Senate Judiciary Committee Hearing: E-Commerce Platforms Have Curbed Infringement, But Counterfeits and Safety Problems Persist

The full Senate Judiciary Committee convened today for a hearing titled, “Cleaning Up Online Marketplaces: Protecting Against Stolen, Counterfeit, and Unsafe Goods,” in which witnesses explained the continuing challenges of policing stolen and counterfeit products in online marketplaces. The panelists included small business owners, internet platform advocates, academics and retail store representatives.

3D Printing: Adoptability, Assurance, IP and Consumer Concerns

Conceiving of an idea and then turning that idea into an actual end-product were two distinct processes prior to the era of 3D printing. But thanks to recent advancements in technology, what used to take a number of days can now become a reality with just one click. However, that “single click” involves generating a computer-aided design (CAD) model, creating the required Standard Triangle Language (STL) file, converting it into machine codes, pre-setting the machine for the desired material, and then, finally, printing it.  3D printing is thus as easy as printing a letter on your desk jet printer on the one hand, and as difficult as setting up a lathe machine on your tabletop on the other. Considering all of the variables, the question becomes, is 3D printing adoptable for the average consumer?

(Not) Copyright Infringement: Is dbrand Infringing Nintendo’s IP?

Is imitation really the highest form of flattery? Nintendo might not think so after seeing dbrand’s latest Switch skin set. The Nintendo Switch has become extremely popular amidst social distancing, work from home, and stay at home requirements during the COVID-19 pandemic. The console’s combination of handheld and traditional features, along with its wide variety of games, appeals to a large audience and provides an engaging way to spend time at home.

From TikTok to Instagram: How to Legally Live Stream

Every day, DJs, athletes, entertainers and influencers broadcast live on Instagram, YouTube and other similar channels. Whether you are a professional entertainer or just connecting with friends and family, broadcasting and sharing content online raises many legal issues, including intellectual property, publicity rights, commercial speech, and contractual terms of service. Accordingly, digital content creators should be cautious with what they publish. In this article, we briefly explore these topics, and provide some Dos and Don’ts for avoiding legal trouble in the United States when sharing content online.

Final Briefs Filed with SCOTUS in Romag Fasteners Case on Trademark Infringement Damages

On November 27, briefing concluded at the Supreme Court with the filing of Fossil’s respondent’s brief in Romag Fasteners, Inc., v. Fossil, Inc., et al. The final briefing sets the stage for the Court to hear the case on January 14, 2020. The Court will hopefully resolve a current Circuit split on the availability of disgorgement of profits as damages for trademark infringement. Currently, the First, Second, Eighth, Ninth, Tenth and D.C. Circuits all require willful infringement before allowing disgorgement of an infringer’s profits (the First Circuit requires willfulness if the parties are not direct competitors and there is also some disagreement on where the Eighth Circuit falls on the issue). The Third, Fourth, Fifth, Sixth, Seventh and Eleventh Circuits all allow for disgorgement of profits without willful infringement. There has been a Circuit split for some time on this issue and the Supreme Court previously denied certiorari on similar cases but the Court is now set to resolve the split.

National Courts Can Order Worldwide Takedown, Says CJEU in Case Against Facebook

The Court of Justice of the European Union (CJEU) has ruled that host providers, such as Facebook, can be required to take down illegal content, including identical or equivalent variations, worldwide once they are made aware of it. The Court was ruling on the interpretation of the E-Commerce Directive (Directive 2000/31/EC) in a defamation case brought by an Austrian politician. (Eva Glawischnig-Piesczek v. Facebook Ireland Limited, Case C-18/18 [ECLI:EU:C:2019:821].) The politician, Eva Glawischnig-Piesczek of the Green party, asked Facebook Ireland (which operates Facebook outside of the U.S. and Canada) to delete a news clipping and associated comment, which she claimed insulted and defamed her. Following court proceedings in Austria, Facebook Ireland disabled access in Austria to the specific content published. However, the case raised the following questions: could Facebook Ireland additionally be ordered to remove posts with identical or equivalent content to that already found to be illegal, and should it disable access to the illegal content worldwide?

A New Paradigm for Risk Management in Increasingly Intangible Economies

The business world has fundamentally changed, but most business people seem not to have noticed. Intangible assets and investments are increasingly dominating the leading economies. The world’s largest retailer holds no inventory; the world’s largest taxi service owns no cars; and the world’s largest hotel chain has no rooms. Property, plant, and equipment are no longer a company’s most vital assets. Intangible assets are swallowing the collective balance sheets of the strongest and most successful economies throughout the world—and are increasingly dominating investment and growth in such economies. Because the intangible revolution is only a few decades old, many companies have yet to develop or otherwise obtain robust intellectual capital management capabilities, including effective risk management of their intangible assets. Though virtually no mature businesses would consider operating without the protection of property and casualty insurance, very few companies effectively insure their intangible assets, despite such “assets that cannot be touched” often representing the most critical components of companies’ success and survival. This is partly because traditional IP insurance solutions have generally failed to meet the needs of corporate buyers.

Federal Circuit Deems Written Description Requirement Satisfied if Specification Identifies the Claimed Invention in a Definite Way

The United States Court of Appeals for the Federal Circuit recently issued a ruling reversing a district court’s grant of summary judgment of non-infringement and invalidity for failure to satisfy the written description requirement. See CenTrak, Inc. v. Sonitor Techs., Inc., 2019 U.S. App. LEXIS 4442 (Fed. Cir. Feb. 14, 2019) (Before Reyna, Taranto, and Chen, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge). The Court said the written description requirement does not require that the specification provide either examples or an actual reduction to practice. Instead, a constructive reduction to practice may be sufficient if the specification identifies the claimed invention in a definite way.

Ribbon Communications Decries ‘Baseless Attacks’ on IP Rights After Metaswitch Networks Files Antitrust Suit

Secure cloud communications provider Ribbon Communications announced it would continue to enforce its intellectual property rights in the face of what it called “baseless attacks” by its UK-based cloud competitor Metaswitch Networks. Ribbon decried a recent antitrust lawsuit filed against it by Metaswitch and charged its competitor with continuing to infringe upon Ribbon’s patent claims despite earlier jury verdicts in district court which found that Metaswitch was infringing upon those asserted claims. Ribbon Communications’ announcement follows a lawsuit filed by Metaswitch Networks on November 19th in the Southern District of New York. “It is disappointing that Metaswitch is attempting to relitigate claims that it already lost in federal court,” said Ribbon CEO Franklin “Fritz” Hobbs. “Ribbon will not be deterred by these actions, and we look forward to having Ribbon’s intellectual property rights vindicated and Metaswitch finally paying for its misappropriation of Ribbon technology.”

ITC Final Initial Determination: Apple Devices Infringe Qualcomm Patent but No Exclusion Order

Despite finding patent infringement under Section 337 and upholding the validity of Qualcomm’s asserted patents, ALJ Pender found that the statutory public interest factors weighed against issuing a limited exclusion order in this case. This turns the victory for Qualcomm into nothing more than a pyrrhic victory at best given that the only remedy the ITC can hand out are exclusion orders and cease and desist orders. The ITC does not have any jurisdiction to hand out monetary damages. So what exactly would Qualcomm receive for Apple’s infringement? What exactly would Apple be required to pay or change as the result of engaging in infringing behavior? It would seem that there will be no remedy for Qualcomm under ALJ Pender’s decision, and no consequences for Apple infringing the patent claims that have been confirmed valid. 

CAFC vacates Summary Judgment entered against Intellectual Ventures

On Tuesday, September 4th, the Court of Appeals for the Federal Circuit issued a precedential decision in Intellectual Ventures I LLC v. T-Mobile USA, Inc., et. al., vacating and remanding a grant of summary judgment entered by the district court finding the defendants in the case didn’t infringe a patent asserted by Intellectual Ventures. The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Kimberly Moore and Jimmie Reyna found that the district court had erred in its claim construction leading up to the grant of summary judgment in the case.

A Personal Plea From the Zip-It Inventor to Support the Inventor Protection Act

Cobra Products filed a lawsuit for patent infringement. G.T. Water then filed for a re-examination of my patent at the U.S. Patent and Trademark Office to invalidate my patent claims. My licensing agreement with Cobra and BrassCraft was to share equally in the cost of defending my patent. However, Cobra Products elected not to help me in the defense of my patent at the USPTO. I was forced to bear the total cost of that alone. After seven years of validity proceedings, which have cost more than $250,000, the Patent Trial and Appeal Board (PTAB) has invalidated all 12 of my claims covering the Zip-It. How can the USPTO issue a patent with 12 claims and then use the PTAB to neuter my patent? Since this has been going back and forth with the court system, there are now numerous other entities which have engaged in copying and infringing my patented invention.

Rejection of proposal did not obviate requirement to disclose inventions to standard setting body

The Federal Circuit, however, found the district court’s enforceability finding to be unsupported by evidence. The rejection of Nokia’s proposal did not obviate Nokia’s requirement to disclose inventions that might be essential to the standard. Dr. Walker’s uncontroverted testimony explained that patent applications are to be disclosed at the time proposals are presented. “[A]n ETSI member’s duty to disclose a patent application on particular technology attaches at the time of the proposal and is not contingent on ETSI ultimately deciding to include that technology in an ETSI standard,” Bryson explained. Notwithstanding, the Federal Circuit elected to vacate this ruling rather than electing to reverse the district court because the existence of an implied waiver is an equitable defense.

Florida Restaurateurs Face Off in Trademark Suit Over Frenchy’s Name

On February 20th, Clearwater Beach, FL-based restaurateur Frenchy’s Corporate filed a suit alleging trademark infringement against the owners and operators of Frenchy’s Pizzeria & Tavern, located less than an hour’s drive away from Clearwater in Port Richey, FL. The suit, filed in the Middle District of Florida, aims to protect Frenchy’s Corporate trademark rights to the unregistered trademark “FRENCHY’STM” under…

Examining CAFC Application of §271(g)(1)’s ‘Materially Changed’ Exception to Infringement Liability

35 U.S.C. § 271(g) was enacted in 1988 as part of the Process Patents Amendments Act to address instances where would-be infringers were avoiding infringement liability by using a process, patented in the U.S., outside of the country and then importing the product of the patented process into the U.S. Eli Lilly and Co. v. American Cyanamid Co., 82 F.3d 1568, 1571 (Fed. Cir. 1996). Under Section 271(g), such activity constitutes infringement. 35 U.S.C. § 271(g). The statute, however, carves out two exceptions: (1) where the product of the patented process that was made outside the U.S. is “materially changed” prior to importation; and (2) where the product of the patented process becomes a “trivial and nonessential component” of the product being imported. This article examines Federal Circuit case law addressing the circumstances that will (and will not) give rise to application of the “material change” carve out to infringement liability under Section 271(g).