The U.S. Court of Appeals for the Federal Circuit (CAFC) has once again reaffirmed that appellate review of patent claim interpretations is de novo, without deference to the trial court even for factual matters.1 The 6-4 en banc decision in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp.,2 by the only appellate court having a say on patent matters, would appear to be an open invitation for the U.S. Supreme Court to finally take up the issue.
The importance of the patent claims
The scope of a patent is defined by its claims (which are found at the end of the patent). Accordingly, they are the most significant part of the entire patent instrument. Patent claims are simply collections of words, carefully crafted to encompass as much subject matter as possible while simultaneously distinguishing all prior art (to withstand a validity attack). But, because of the inherent limitations of words, one or more terms in a patent claim usually has multiple possible interpretations, and the “correct” meaning of a word or phrase depends on the context in which it is used. Further complicating matters is the fact that patent claims sometimes employ highly technical terminology that is not only amenable to more than one interpretation, but also may require guidance from experts for a court to ascertain the “correct” meaning.
Claim interpretation is the heart and soul of nearly all patent disputes. The meaning of the words and phrases used in the claims — which define the scope of the patent — is critical to not only the question of infringement, but also patent validity. Infringement and validity may turn on the meaning of a single word or phrase in a claim. The word “on,” for example, has been the subject of at least two CAFC decisions — both of which reversed a trial court’s interpretation of the meaning of the word “on.” See Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373 (Fed. Cir. 2002), and Senmed, Inc. v. Richard-Allan Medical Industries, Inc., 888 F.2d 815 (Fed. Cir. 1989). Continue Reading
A few days after we posted “Facebook’s ‘Look Back’ videos send reminder: Get digital accounts in order before death,” which provided guidance to digital account users on how to make plans for their digital accounts before death, Facebook announced a policy change regarding how it would maintain the profiles of its users who have passed away in an effort to better preserve their legacies on the site.
As we explained in the post, before the change, when a user’s account was memorialized, the profile was restricted to “friends” only. This precluded anyone who was not a “friend” of the user from seeing or commenting on the profile. With Facebook’s new change, which became effective Feb. 21, 2014, Facebook will now maintain the visibility of the user’s content as-is, which will allow people to view the memorialized profiles in the same manner consistent with the user’s privacy settings.
The reason, as Facebook explained: “We are respecting the choices a person made in life while giving their extended community of family and friends ongoing visibility to the same content they could always see.” This means that if a user’s profile was publicly visible before death, it will remain that way after death. This gives Facebook user another reason to stay on top of Facebook’s privacy settings and adjust accordingly.
Facebook also announced that it will share the Look Back video of a loved one, which it created for users as part of its 10th Anniversary, upon a proper submission of A Look Back for a Loved One Who Has Passed Away request.
Not surprisingly, the policy change has elicited varied reactions including whether social media sites should be responsible for profile settings or if legislation is needed to regulate digital assets. As noted in our earlier post, only a handful of states have laws governing digital assets, and federal legislation focusing on the issue is in the very early stages.
With more and more people storing significant portions of their lives online, we can expect see more proposed legislation on this issue — especially considering the ongoing conversation around the need to modernize probate and estate laws to take into account digital assets.
You may have just recovered from all the patent law changes that have occurred since passage of the America Invents Act (AIA) a couple of years ago, but we now have a new wave of changes prompted by the Patent Law Treaties Implementation Act of 2012 (PLTIA), which became effective Dec.18, 2013. The PLTIA implements both the Patent Law Treaty and the Hague Agreement Concerning the International Deposit of Industrial Designs.
The PLTIA changes the term for U.S. design patents from 14 years after issuance to 15 years after issuance for all design patents granted from applications filed on or after Dec. 18, 2013. Design patents continue to have no requirement for maintenance fees, and the term for utility patents remains 20 years from the earliest U.S. filing date. You may recall that a design patent covers the ornamental design of an article of manufacture, such as product shape, while a utility patent covers useful, functional features of a process, machine, article of manufacture, or composition of matter.
This change is of particular interest to entities in the technology industry because design patents have increasingly become a focus of their IP protection activities in recent years. This surge in interest was at least partly prompted by the “smartphone patent wars” in which Apple Inc. obtained a judgment of more than $1 billion (later reduced to $290 million) in damages against Samsung Electronics Co., Ltd. for patent infringement of both U.S. utility and design patents. The judgment was partly based on a jury’s finding that the thin, rectangular, rounded-corner design of various Samsung Galaxy devices infringed Apple’s design patent. Continue Reading
To celebrate its 10th anniversary, Facebook created a “Look Back” video for each of its users. A father mourning the loss of his recently-deceased son uploaded a video of himself to YouTube pleading with Mark Zukerberg and Facebook to see his son’s video. The father deemed his request a “shot in the dark,” but Facebook answered and informed the father it was creating a memorial video for his deceased son.
The same day I read about this, I had a reminder on my Facebook homepage reminding me to say “Happy Birthday” to one of my Facebook friends. Unfortunately, that friend passed away a few weeks ago, and the would-be-friendly Facebook reminder ended up being a painful one.
The new year is off to a fast start with a number of decisions addressing key e-discovery issues, including a decision from the Seventh Circuit regarding the Dec. 9, 2013 sanctions order issued by the district court in the In Re Pradaxa multi-district products liability litigation and a spoliation finding against the defendants in the In Re Actos multi-district products liability litigation. There also were decisions regarding the violation of the protective order in the long-running Apple v. Samsung “big-ticket patent litigation,” the recovery of e-discovery costs, undue burden and the form of production.
In Re Actos (Pioglitazone) Products Liability Litigation, No. 11-md-2299 (W.D. La. Jan. 27, 2014). The court sanctioned the defendants for spoliation after 46 custodial files and the ESI in those files were lost, destroyed or otherwise rendered inaccessible. The deleted files belonged to high-ranking officials heavily involved in the development, sales, marketing and promotion of the drug Actos® as well as sales representatives whose day-to-day work involved marketing and distributing Actos in the marketplace. The defendants argued that they did not have a duty to preserve these files because the duty to preserve documents relating to “bladder cancer” did not arise until the summer of 2011. The court rejected that argument and pointed to a “sweeping” litigation hold that the defendants issued back in 2002 in connection with other Actos-related personal injury claims which broadly covered “any and all documents and electronic data” relating to Actos. In ruling on the plaintiffs’ motion for sanctions, the court separated the request into one made under Rule 37 and one made under the court’s inherent powers, and it deferred ruling on the Rule 37 request against the defendants’ counsel until the close of evidence at trial. The court declined to enter a default judgment against the defendants, but it ordered that all evidence of the defendants’ conduct as to the destruction of ESI and other documents would go before the jury. Thereafter, the court would determine the appropriate instruction to give to the jury and consider the plaintiffs’ request for attorneys’ fees and costs. Continue Reading
Its time for our ink jet printers to move aside and begin to collect dust because there is a new kid in town: 3D printers. 3D printers are not technically “new” technology; they have been used by engineers since the 1980s. However, they are new to everyday consumers, and they threaten to become mainstream in 2014. This technology was mentioned in the President’s 2013 State of the Union speech, and even the cast of “Grey’s Anatomy” has been fighting over their 3D printer to build new life-saving organs. It is a hot topic and technology beginning to permeate news media and our everyday lives.
Our classic printers read information from digital documents and print the formatted text in ink, line by line, onto paper. A 3D printer, however, interprets CAD, or computer aided design, files — similar to a blueprint. These blueprints allow the 3D printers to “print” by building objects up layer-by-layer out of plastic, metal or other materials. This method of manufacturing allows for the elimination of older techniques such as injection molding.
This new technology has the promise to allow anyone to create almost anything wherever and whenever they want. Examples include the production of replacement parts for appliances, tools, medical prosthetics and potentially building biological organs out of organic material. One of the major patents protecting a specific type of 3D printer expired this week. The cost of 3D printers have decreased steadily due to the expiration of such patents on the 3D printers themselves. The price today ranges anywhere from just under $1,000 to more than $3,000, which allows this technology to be more accessible to the everyday consumer. Continue Reading
Many people use the start of a new year to resolve to improve their diet, get more sleep and exercise more. Professional resolutions for attorneys often focus on improving efficiency, expanding networks and areas of expertise or simply submitting their time entries properly. A decision late last year in the In re Pradaxa Products Liability Litigation suggests some potential professional resolutions for litigators and in-house litigation counsel to consider when litigation arises or is reasonably anticipated.1
Pradaxa is a multidistrict products liability action pending in the Southern District of Illinois. The case involves, among other things, the safety of a blood thinner and a pharmaceutical manufacturer’s alleged representations about the efficacy of that product. This complex case involved extensive discovery involving millions of documents and hundreds of witnesses and, not surprisingly, discovery issues and disputes arose that were not particularly unique.
In a detailed opinion reviewing the history of the discovery disputes brought to its attention by the plaintiff’s steering committee, the district court commented that it had been “exceedingly patient and, initially, was willing to give the defendants the benefit of the doubt” on the discovery issues. For example, this was not the first opinion in this action addressing defendants’ discovery responses and document preservation efforts.2 Indeed, the court had “warned the defendants in the past, when such conduct continues, there is a cumulative effect” that the court not only can but also should take into account. Continue Reading
Following is Part 2 of my third annual list of the top 10 e-discovery developments and trends from the past year. Read Part 1.
6. “It is malpractice to not seek a 502(d) order from the court before you seek documents.” U.S. Magistrate Judge Andrew Peck began last year at Legal Tech providing his thoughts on the importance of orders entered pursuant to Federal Rule of Evidence 502(d). He said: “I’ll give you a fairly straight takeaway on 502(d). In my opinion it is malpractice to not seek a 502(d) order from the court before you seek documents. That doesn’t mean you shouldn’t carefully review your material for privileged documents before production, but why not have that insurance policy?” Other judges echoed these sentiments as the year progressed.
As if hearing federal judges say malpractice and Rule 502(d) orders in the same sentence were not enough to convince federal court litigants to use them, cases throughout the year further highlighted the importance of securing these orders. Magistrate Judge Waxse enforced a Rule 502(d) order over the objection of the party that originally requested it in Rajala v. McGuire Woods, LLP, 08-2638 (D. Kan. Jan. 3, 2013). Earlier in the case, the defendant moved for a protective order that contained a clawback provision pursuant to Rule 502(d). Magistrate Judge Waxse entered the order which included language stating that “[t]he inadvertent disclosure or production of any information or document that is subject to an objection on the basis of attorney-client privilege or work-product protection … will not be deemed to waive a party’s claim to its privileged or protected nature or estop that party or the privilege holder from designating the information or document as attorney-client privileged or subject to the work product doctrine at a later date.”
Despite this language, the defendant later tried to prevent the plaintiff from clawing back a privileged document that had been produced. The defendant argued that the plaintiff should not be able to reply on the order because it engaged in a “document dump” with no pre-production privilege review. Magistrate Judge Waxse rejected the defendant’s argument and enforced the plain language of the Rule 502(d) order because the production was inadvertent and there was no evidence that the plaintiff had intended to overwhelm or burden the defendant with documents largely irrelevant to the litigation. “The order is designed to reduce the time and costs attendant to document-by-document privilege review, and was entered with the express goal of eliminating disputes regarding inadvertent disclosure of privileged documents, which would disrupt the discovery process and cause the attorneys in this case to expend significant resources and time arguing about what steps were taken to prevent disclosure and to rectify the error.” Continue Reading
Here is my third annual list of the top 10 e-discovery developments and trends from the past year.
1. The growth of Bring Your Own Device (BYOD) policies and work-related text messaging is creating litigation hold challenges. A Cisco survey found that 89% of companies are currently enabling employees to use their own electronic devices for work. Gartner predicts that by 2017 a half of all employers will require employees to provide their own devices. The growing prevalence and convenience of personal devices in the workplace is leading more employees to use text messaging for work-related purposes.
With these trends, it is no wonder that there were a number of decisions last year addressing whether an employer must produce ESI (mainly text messages) from its employees’ devices (mainly cell/smart phones). One of the key issues in these cases is whether the employer has “possession, custody, or control” over the devices. To decide this issue, courts have looked at whether the employer provided the devices, whether the employees used the devices for work-related purposes, and whether the employer otherwise had any legal right to obtain ESI from the devices on demand. Other issues that have been raised are the privacy rights of the employees and the employer’s obligations if its employees refuse to turn over their devices during discovery.
In ordering the production of business-related text messages on employees’ cell/smart phones, a court rejected the argument that the failure to preserve text messages should not be sanctioned because they are a “less prominent form of communication” and that “the production of text messages is too burdensome.” According to the court, the defendants “had a duty to ensure that their employees understood that text messages were included in the litigation hold” because “[i]t is certainly common knowledge that texting has become the preferred means of communication.” In Re Pradaxa (Dabigatran Etexilate) Products Liability Litigation, MDL No. 2385 (S.D. Ill. Dec. 9, 2013). Continue Reading
Forensic computer examinations can be expensive and therefore may prompt the question during litigation – are they worth it? A recent decision from the Southern District of Ohio illustrates why the answer is “yes” in many trade secret cases. In H&H Industries, Inc. v. Miller, the court relied heavily on the results of the forensic examination of the defendant’s computers to enter a preliminary injunction that prohibited the defendant, the plaintiff’s former employee, not only from divulging or using the plaintiff’s trade secrets but also from working for his new employer.
The plaintiff, H&H Industries, retreads and repairs off-the-road (“OTR”) tires and sells used OTR tires. The defendant, Erik Miller, began working for H&H in 2006, and since 2007 had worked as a salesperson of OTR tires. Miller had access to H&H’s confidential information, including pricing information, and, as such, H&H required him to sign a confidentiality agreement. On July 26, 2013, Miller notified H&H that he was leaving the company to join one of H&H’s direct competitors, Polar Rubber Products.