Posts Tagged: "intellectual property"

Two amicus briefs have now been filed in The Chamberlain Group’s bid to the Supreme Court for review of “whether the Federal Circuit improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims ‘as a whole.’” Former Federal Circuit Chief Judge Randall Rader has submitted a joint brief with Chargepoint, Inc.—which recently lost its own plea to the High Court to fix Section 101 law—and High 5 Games submitted a separate brief. Both are backing the petition and urging the Court to resolve the uncertainty around U.S. patent eligibility law once and for all, and sooner rather than later.

Part 1of this article addressed the Eleventh Circuit’s decision in Compulife Software, Inc. v. Newman, __ F.3d __, 2020 WL 2549505, (11th Cir. May 20, 2020) and the court’s dubious conclusion that information “scraped” from a public website could be a trade secret. In particular, on this issue, the court held that even if the “scraped quotes were not individually protectable trade secrets because each is readily available to the public…taking enough of them must amount to misappropriation of the underlying secret at some point. Part II will address the understanding of “improper means” under trade secret law and whether the Eleventh Circuit was correct in determining that the use of bots to scrape a very large amount of information from a website can constitute “improper means” for acquiring such information.

The doctrine of equivalents allows a patentee to raise a claim of infringement even when each and every element of the patented invention is not identically present in the allegedly infringing product/process. The doctrine is aimed at preventing an infringer from gaining the benefit of a patented invention by making insubstantial changes. Disclosure-dedication doctrine is a bar to the doctrine of equivalents. Under the disclosure-dedication doctrine, when a patentee discloses subject matter but does not claim it, the patentee dedicates the unclaimed subject matter to the public and cannot recapture it through the doctrine of equivalents. The public can then practice the unclaimed subject matter without fear of infringement.Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, No. 2019-1924 (Fed. Cir. May 8, 2020) (“Eagle Pharm”) is the most recent Federal Circuit case involving this doctrine. In Eagle Pharm, the Federal Circuit considered whether a patentee can avoid dedication on the ground that the disclosure occurred in an embodiment distinct from the claimed invention. The court answered the question in the negative.

This week in Washington IP news, the Senate remains in recess, but the House of Representatives features several committee hearings on the creation of a National Cyber Director office, the use of technologies for remote voting by House members and accelerating the pathway from basic research to commercialization in energy innovation. Elsewhere, the Information Technology & Innovation Foundation hosts webinars on supporting biopharmaceutical sector innovation and legislative proposals to ban end-to-end encryption, while the Center for Strategic & International Studies explores nuclear energy innovation and hosts a discussion on innovation policy with former Google CEO Eric Schmidt. 

The USPTO’s recent landmark decision (16/524,350) concluding artificial intelligence (AI) cannot be a named patent inventor perhaps sparked fears of super-robots inventing critical technologies that, alas, receive no patent protection. If an AI identifies new, more efficient battery chemicals, will that new battery be unpatentable? If an AI builds chemical compounds that become the next wonder drug, will that drug-maker…

The most dominant, divisive issue in patent law over the last decade—Section101-eligibility and the Supreme Court’s Mayo-Alice framework—appears to have just become more divisive. Indeed, at least part of the reason for the controversy is that, with Mayo-Alice as the governing test, courts as a preliminary matter can decide Section101-eligibility based on considerations of an “inventive concept” and patentability—issues the Court once declared were “not relevant” to the separate eligibility provision of the Patent Act. Be that as it may, the Federal Circuit has recently issued certain decisions indicating that Section 101 now incorporates another vast area of invalidity; viz., the requirements for “enablement” under 35 U.S.C. §112(a). See, e.g., Customedia Technologies, LLC v. Dish Network Corp., 951 F.3d 1359, 1365-66 (Fed. Cir. March 6, 2020). In this article, we examine how this new requirement for Section 101 has emerged, the recent precedent on the issue, and the Patent Act’s requirements that undermine such Section 112(a) considerations for a Section 101-eligibilty test.

On July 9, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed in-part and vacated in-part a decision of the U.S. District Court for the Northern District of California in Uniloc 2017 LLC v. Apple, Inc.  In particular, the CAFC concluded that the district court did not abuse its discretion in denying Uniloc’s requests to seal its own confidential information. However, the CAFC concluded that the district court failed to properly assess whether third-party information, including licensees’ names, addresses and royalty rates, should be sealed.

Along with cat memes, TikTtok videos and electoral manipulation, the Internet is enriching people’s lives with the instant quiz. Whether seeking to gauge one’s resemblance to a Game of Thrones character or satisfaction with an online purchase, the instant online quiz, questionnaire or survey is a powerful mechanism for businesses, governments and nonprofits to learn about potential customers, constituents and supporters. As with anything that can create value, a lawyer’s advice will eventually be sought to learn how to protect the client’s brands and works from appropriation and misuse by third parties. The protectability of a quiz as a species of intellectual property is now before the Southern District of New York in the case of Metabeauty, Inc. v. HelloAva, Inc., et. al., a lawsuit filed by my client Metabeauty, Inc. against a venture-backed online platform that recommends skincare and cosmetic products.

According to the Concord Monitor, the University of New Hampshire is being petitioned by several students to drop the name of Franklin Pierce from the law school. And although the decision will not rest with the faculty of the law school, sources tell IPWatchdog that 12 of the 25 full-time law school faculty support the petition. “With the movement that we’re currently in, it felt like an opportune time to take the name off there,” Adrián Coss, a rising third-year law student at the law school who is involved with the petition told the Concord Monitor. “It’s wrong to begin with. This is racially insensitive.” Why is the name “Franklin Pierce” racially insensitive? In a nutshell, Pierce, who did not himself own any slaves and abhorred slavery, did not do enough to put an end to the practice of slavery during his turbulent one term as President of the United States.

Versatile video coding (VVC), also known as Future Video Coding (FVC) or H.266, is a video compression standard that was released on July 6 and is being positioned as the successor to High Efficiency Video Coding (HEVC or H.265). CPA Global has reviewed the key aspects of the standard and factors which could impact its licensing and adoption and we have identified and analyzed the key patented technologies that have a possibility of being relevant to the VVC standard. The standard was in the process of being finalized at the time we conducted our analysis and we have therefore referred to Draft 8 of VVC, which was approved by JVET in the Brussels meeting from January 7-17, 2020.

On July 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded an Attorney Fee Order of the U.S. District Court for the Southern District of Florida denying an award of attorney fees to ShoppersChoice.com. Electronic Communication Technologies, LLC. v. ShoppersChoice.com, LLC.  The CAFC held that the District Court erred in failing to consider Electronic Communication Technologies, LLC’s (ECT) manner of litigation and the objective unreasonableness of ECT’s infringement claims, and further held that the court applied the incorrect attorney fee statute.

On July 7, the U. S. Court of Appeals for the Federal Circuit (CAFC), in In re: Boloro Global Limited, granted a motion by Boloro Global Limited (Boloro) to vacate and remand the decisions of the Patent Trial and Appeal Board (the Board) in three ex parte appeals that affirmed an examiner’s rejection of claims of Boloro’s patent applications. Each of Boloro’s U.S. Patent Applications Nos. 14/222,613, 14/222,615, and 14/222,616 were rejected by the patent examiner as being unpatentable under 35 U.S.C. § 101. On appeal, the Board affirmed the examiner’s rejections and denied rehearing. In August 2019, Boloro appealed the decisions to the CAFC. Subsequently, in October 2019, the CAFC issued a decision in Arthrex, Inc. v. Smith & Nephew, Inc., which was an appeal from an inter partes review, holding that administrative patent judges (APJs) were not constitutionally appointed.  In January 2020, Boloro filed a motion to vacate the Board’s decisions and remand for further proceedings consistent with the CAFC’s decision in Arthrex.

It was another relatively normal week at the Patent Trial and Appeal Board with 30 patent filings—two post grant reviews (PGRs), 28 inter partes reviews (IPRs)—and another big one in district court with 98 new petitions—but yet again, that spike is largely driven by WSOU’s unusual filing pattern. WSOU has now sued Google on 15 separate patents, all covering different software aspects of various products, and single patent suits—the former Uniloc contingent continues to drive the numbers up, and continues to favor the Western District of Texas to do so. Some of the petitions challenging the Magnetar Capital-backed Neodron were instituted this week, the same week a tranche of Magnetar’s Data Scape patents were affirmed unpatentable on Section 101 before the Federal Circuit; further Bausch & Lomb abbreviated new drug application (ANDA)-related suits were filed as discussed last week; and new and old-hand IP Edge subs continue to file at a brisk clip.

On June 25, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Blumenthal Distributing v. Herman Miller, Inc. in which the appellate court reversed some parts of a Central District of California ruling on trade dress and trademark infringement claims related to office chairs sold by Herman Miller, and affirmed others. The Ninth Circuit’s decision discusses at length the issue of functionality, an area of trademark law which is undefined by statute and is notable for overturning parts of the district court decision because of an erroneous jury instruction based upon the Ninth Circuit’s own model rules. The decision also includes a partial dissent by Circuit Judge Michelle Friedland on the issue of dilution, with Judge Friedland arguing that Herman Miller hadn’t proven the requisite fame to prevail on its trademark dilution claims.