Technology Law Source

A tale of two remands (Part I) — how the Federal Circuit is implementing the new standard for appellate review of patent claim construction

Earlier this year, the Supreme Court finally resolved an issue that divided the U.S. Court of Appeals for the Federal Circuit (CAFC) for nearly 20 years. In Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, the Supreme Court unanimously held that a trial court’s underlying factual determinations with respect to extrinsic evidence used in patent claim constructions must be reviewed on appeal under the clearly erroneous standard rather than de novo.1

Before the Supreme Court’s decision in Teva, the CAFC reviewed patent claim constructions de novo, including any allegedly fact-based questions relating to the trial court’s claim construction. As a result, it was quite common for the CAFC to reverse a trial court’s claim construction well after the completion of a lengthy jury trial. The case would be remanded to the trial court (unless the CAFC determined that the error would not have affected the judgment), in some instances leading to an entirely new trial on the merits (and, perhaps, another appeal to the CAFC). After Teva, many hope that CAFC claim construction reversals will be less frequent, particularly when litigants are able to introduce extrinsic evidence such as expert witness testimony into the claim construction process.

The CAFC has now had an opportunity to reconsider on remand not only its decision in Teva, but also Lighting Ballast Control LLC v. Philips Electronics N.A. Corp. which the Supreme Court also remanded to the CAFC for reconsideration in light of Teva. Continue Reading

The focus of the ADA turns to websites in the digital age: Is your site compliant?

This article is excerpted from research conducted by Emily R. Taylor, one of Porter Wright’s talented 2015 summer law clerks. Emily will enter her third year at Vanderbilt University Law School in the fall. 

Title III of the Americans with Disabilities Act (ADA) prohibits discrimination on the basis of disability in places of public accommodation, including restaurants, movie theaters, schools, day care and recreational facilities, and doctors’ offices, and requires new or remodeled public places, as well as privately owned commercial facilities, to comply with ADA standards. This law, enacted in 1990, does not specifically address website accessibility for the disabled. But since 2006, when Target settled a class action lawsuit1 alleging Target.com was inaccessible to the blind in violation of the ADA, the issue of whether the law applies to websites has been a much-discussed topic in the federal courts.

Courts are split on two issues.2 The first is the threshold issue as to whether the ADA applies to websites at all. The second issue relates to the degree in which the ADA applies to websites. The Third, Ninth and Eleventh Circuit courts apply the ADA only to websites that have a physical connection to goods and services available at a physical store or location. But the Second and Seventh Circuit courts apply the ADA more broadly to include websites that lack “some connection to physical space.”3 Despite the split, one thing is for certain; the tide is moving toward ADA compliance for websites.

The Department of Justice (DOJ) has made clear that it interprets the ADA as applicable to websites, and issued an Advanced Notice of Proposed Rulemaking that would amend the language of the ADA to explicitly prohibit discrimination with respect to websites. Additionally, private standards and market signals, such as the Web Content Accessibility Guidelines (WGAC 2.0) and website design consulting services, indicate an expectation that websites will soon need to be ADA compliant. Continue Reading

Seminar shares tips to consider if you think a “patent troll” is targeting you or your company

Probably the most important takeaway from the second installment of Porter Wright’s Technology Seminar Series was this: No single thing defines a so-called patent troll — and if (or when) you get a letter accusing infringement, there’s no uniform way to respond. Instead, stop and take a breath. Then, be tenacious about collecting information about the accuser and assessing those compiled details. Use this assessment to develop a plan that allows you to handle the situation in a way that meets your comfort level regarding risk, cost and desired outcome.

Speakers Jim Liles and Rick Mescher walked attendees through several crucial aspects of analysis and action steps during the June 17 seminar titled “Proactive strategies for combating ‘patent trolls.’ ” Here’s an excerpt:

Common actions of a patent troll

Not all allegations by non-practicing entities (NPEs) or patent assertion entities (PAEs) are meritless. But allegations from entities that participate in any the following common practices are likely suspect. Continue Reading

New gTLD program continues to gain momentum – nearly 6 million new domain registrations to date

The new gTLD program, considered to be one of the most important Internet developments in recent years, continues to gain momentum since ICANN delegated its first new gTLD back in October 2013. ICANN has delegated more than 600 new gTLDs to date. Of those delegated strings, 365 are open to the general public. A little more than 1 million new domains had been purchased at this time last year; now, that number is nearing the 6 million mark. And don’t expect things to slow down. New gTLDs continue to roll out in quick succession, spurring about 20,000 new domain purchases every day.

What’s selling?

During the past several months, the leaderboards have seen a great deal of movement, with each new gTLD jockeying for the top spot as they become available to the public. Though some have remained dominant, such as .xyz and .club, more recently released gTLDs including .网址 (URL or internet site) and .science have made huge strides.

The top 10 gTLDs in terms of number of domain registrations: Continue Reading

U.S. Supreme Court throws a small bone to patent trolls

In one of its only pro-patentee decisions in recent years, the Supreme Court held last week that an accused infringer’s good-faith belief of patent invalidity is not a defense to a claim of inducing infringement. Even though the court reaffirmed that a good-faith belief of non-infringement is a defense to inducement, the court’s decision benefits patent owners, including so-called patent trolls.

A patent grants its owner the right to prevent others from making, using, selling, offering for sale and importing the patented invention in the U.S., as well as the importation into the U.S. of goods manufactured overseas using a patented process.

A direct infringer is someone who engages in one of the prohibited acts (making, using, selling, etc.). There is no requirement that the accused direct infringer was even aware of the patent, let alone knew that they were infringing. Continue Reading

No ifs ands or butts about it: Ohio plaintiffs must prove injuries are “reasonably foreseeable”

Our colleagues on Porter Wright’s product liability team shared an alert about a decision that should be of interest to our manufacturing readers. In Butts v. OMG, Inc., et al., the Sixth Circuit Court of Appeals clarified that a plaintiff’s burden, when bringing a design defect or inadequate warnings claim under the Ohio Products Liability Act, is to prove the injury was reasonably foreseeable to the manufacturer. Read more

End of Cuban embargo could prove costly for unprepared trademark holders

President Barack Obama has called on the U.S. Congress to lift the U.S. embargo on Cuba and normalize trade relations. French President François Hollande recently urged the same of the U.S., saying there is growing interest in doing business with Cuba. When the embargo is lifted, U.S. companies should be prepared to enter the Cuban marketplace. Being prepared means seeking trademark registration.

Cuba is a first-to-file country for trademark protection; in other words, a registration is awarded to the first applicant, even if that applicant has no legitimate claim to the trademark. Currently, an exception to the embargo permits U.S. companies to obtain trademark registrations — as well as submit patent applications — in Cuba. Proactively seeking a trademark registration in Cuba may avoid problems when the embargo is lifted.

An applicant can apply for a Cuban trademark registration using the international Madrid Protocol mechanism if it has an existing U.S. registration. A Cuban trademark application is screened against existing registrations by the Oficina Cubana de la Propiedad Industrial (OCPI). If a registration exists for the mark of the application, the OCPI will reject the application.

Generally, if your brand is well-known in the U.S., it is more likely that a trademark squatter might register your mark in Cuba to demand payment from you in exchange for the trademark. It is more expensive for trademark owners to obtain rights from others rather than to seek early trademark registration in first-to-file countries.

Though it may take time to reach normalized relations with Cuba, companies should consider Cuban trademark registration now so they are better prepared to enter the Cuban market.

Harmless rap or dangerous threat? The question that has Chief Justice Roberts quoting Eminem.

If I look you in the eye and tell you with a flick of my wrist I will slit your throat, you will likely call the police and have me arrested. If I threaten to kill my co-workers, or plant a bomb in a kindergarten class, or shoot my spouse, I will lose my job, my marriage and my freedom. But, if I make those same egregious threats in the form of a rhyme and post them on Facebook it is “artistic expression” and protected free speech.

That is the basis of the argument Anthony Elonis made to the U.S. Supreme Court in a ground-breaking case that is the Court’s first examination of the limits of free speech on social media. Oral arguments were heard Dec. 3, 2014, and a decision is expected by the end of June. That decision will have far-reaching implications, not just for battered spouses, but for employers who want to fire an employee who uses social media to harass and threaten co-workers.

Not long after his estranged wife persuaded a judge to issue a protective order against him, Elonis posted this message to his Facebook page: “Fold up your PFA (protection-from-abuse order) and put it in your pocket. Is it thick enough to stop a bullet?” Continue Reading

Google’s patent shopping spree starts May 8

Google has been one of the most vocal critics of so-called patent trolls, more formally referred to non-practicing entities (NPEs) or patent assertion entities (PAEs), as well as a proponent of measures designed to improve software patent quality. At the same time, Google is one of the largest patent holders in the world. Though Google files its own patent applications, it also actively acquires patents from others. In 2011, for example, Google paid $12.5 billion for Motorola Mobility and its purported 17,000 patents. In 2014, Motorola Mobility was sold to Lenova for $2.9 billion. But Google kept almost all of those 17,000 patents.

Apparently looking to further expand its patent portfolio, last week Google announced a Patent Purchase Promotion. Described as an “experimental marketplace” for patent owners to sell their patents to Google, the program runs May 8-22, 2015. Patent owners interested in selling their U.S. patent to Google can make a binding offer to sell via an online portal.

If Google is interested, submitters will be notified by June 26, 2015.1 Following notification of Google’s interest, a brief period of due diligence will follow. Google will then decide by July 22 if it accepts the offer, and payment will be made within 30 business days thereafter. Continue Reading

Katy Perry’s left shark – take 2

In February 2015, I wrote a comment about Katy Perry’s ineffective attempt to assert copyright to stop a 3D printer from selling figurines similar to a shark costume used in her Super Bowl XLIX halftime show. In an attempt to establish rights in various expressions of that shark, Perry (Killer Queen, LLC) filed U.S. trademark applications for BASKING SHARK, DRUNK SHARK, RIGHT SHARK, LEFT SHARK and for three  applications that depict designs of a shark. Each of the applications recite the goods to be used with the trademarks as cell phone covers, stickers, mugs, T-shirts, sweatshirts, hats, plush toys, action figures, certain costumes, certain figurines, and live musical and dance performances. Those applications have now been examined by the U.S. Trademark Office.

Trademarks, which provide protection for brands and other source identifiers, differ from copyrights, which cover original works of authorship. Although Perry did not come up with the term “Left Shark,” originality is not a requirement for rights in a trademark; however, other requirements may be of issue for her applications.

Perry’s word mark applications appear to be in line for allowance with some amendments, but two of the applications that cover a shark design — a front view of a standing shark and a side view of a standing shark— have been refused because the Trademark Examiner determined that the designs are of a character and do not function as trademarks. (Note: The third application for a shark design used a photo of an actual 3D shark figurine from the printer that Perry originally accused of copyright infringement; the printer asserted his copyright against Perry, and the application was abandoned.) Continue Reading

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