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Category Archives: Intellectual Property

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gTLD weekly update: .nyc is ready for salida del sol, are you?

Posted in gTLDs, Intellectual Property, Trademarks

The sun sets on several new gTLDs

The Sunrise period has ended, or will by Monday, for the new gTLDs listed below.

gTLD

Sunrise Opens

Sunrise Closes

.red

03-11-2014

04-11-2014

.kim

03-11-2014

04-11-2014

.shiksha

03-11-2014

04-11-2014

.pink

03-11-2014

04-11-2014

.farm

02-11-2014

04-12-2014

.viajes

02-11-2014

04-14-201

.codes

02-11-2014

04-14-2014

.blue

03-14-2014

04-13-2014

.wed

03-17-2014

04-18-2014

.zone

02-18-2014

04-19-2014

.boutique

02-18-2014

04-19-2014

.bargains

02-18-2014

04-19-2014

.agency

02-18-2014

04-19-2014

.cheap

02-18-2014

04-19-2014

.immobilien

02-19-2014

04-21-2014

.ninja

02-19-2014

04-21-2014

After Sunrise, gTLDs enter a Landrush period — when individuals seeking second-level domains within a new gTLD can pay for pre-registration — before they become available to the general public. (Read more about Landrush in last week’s gTLD post.) If any of these gTLDs are of interest to your brands or business, now is the time to take action.…


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Another sunrise, another new beginning. New gTLDs delegated and set to launch; are you ready?

Posted in gTLDs, Information Technology, Intellectual Property, Trademarks

New to the delegation pool

ICANN delegates new gTLDs daily, which keeps trademark owners on their toes. Since our last blog article, new gTLD delegations include:

  • .gop
  • .ryukya
  • .yokohama
  • .rest
  • .saarland
  • .consulting
  • .vodka
  • .haus
  • .cooking
  • .moe
  • .rodeo
  • .country
  • .商城(xn--czru2d) – Chinese for “mall”
  • .horse
  • .fishing
  • .vegas
  • .miami
  • .archi
  • .black
  • .ren
  • .meet
  • .sohu

The most recent additions will join the growing list of gTLDs that can begin their Sunrise periods. It is important to remember that though many gTLDs are allowing Sunrise periods to last longer than 30 days, they are required to have only a 30-day period.

gTLDs beginning Sunrise

Sunrise periods can quickly come and go — notice to the unwary. Following is a list of gTLDs set to launch and their corresponding Sunrise periods.…


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De novo review redux — Supreme Court to consider standard of appellate review of patent claim construction

Posted in Intellectual Property, Patents

In a recent blog post, we reported that a divided U.S. Court of Appeals for the Federal Circuit (CAFC) had reaffirmed that appellate review of patent claim interpretations is de novo, without any deference to the trial court even for factual matters. As we stated in that post, the 6-4 en banc decision by the CAFC in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp.,1 appeared to be an open invitation for the U.S. Supreme Court to take up the issue.

The Supreme Court has now accepted that invitation, albeit with a difference dance partner. On March 31, 2014, the Supreme Court granted certiorari in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., on the following issue:

Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.…


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“You, you, and you: Panic. The rest of you: Come with me.” – It’s time for trademark owners to arm themselves against the dot’s new friends.

Posted in gTLDs, Information Technology, Intellectual Property, Trademarks

The Internet Corporation for Assigned Names and Numbers (ICANN) announced this week at ICANN 49 Singapore that the number of new generic top levels domains (gTLDs) that have been “delegated” — i.e., designated as ready for launch — now tops 175. Recently delegated gTLDs include:

  • .london
  •  .nyc
  • .cologne
  •  .trade
  •  . 世界 (Chinese for “world/shijie”)
  •  .bid
  • .vote
  • .reviews
  • .events
  • .democrat
  • .education
  • .coffee
  • .florist

The ICANN website shows the complete list of delegated gTLDs. As this number climbs, it becomes increasingly and even alarmingly important for trademark owners, regardless of whether they have vast or small trademark portfolios, to take action so they have the ability to receive notice and protect their registered marks in the rapidly expanding Internet.

What does delegation mean to brand owners?

Logistically, delegation means that the gTLD registry can begin the “Sunrise” period. For trademark owners however, delegation signals that the battle to quash unauthorized use of domain names has begun.…


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It’s déjà vu all over again — fractured Federal Circuit holds tight on strict de novo review of patent claim construction

Posted in Intellectual Property, Patents

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 …


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Term for U.S. design patents is now 15 years

Posted in Intellectual Property, Patents

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 …


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Key e-discovery cases in January

Posted in Electronic Discovery, Intellectual Property

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.

Spoliation/sanctions

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 …


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The next big fight: 3D printing and intellectual property

Posted in Copyright, Intellectual Property, Patents, Trademarks

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. …


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Timely filing of patent applications: Lessons learned from Michael Jackson and Smooth Criminal

Posted in Intellectual Property, Patents

The U.S. Patent Act provides that an inventor is barred from obtaining patent rights for an invention, and the invention goes into the public domain, when a patent application is not filed within one year of certain activities of the inventor that make the invention available to the public. This is often referred to as the “one year grace period.” Many inventors are unaware of or forget about this time limitation and mistakenly lose rights to their inventions.

Did you know that the pop icon Michael Jackson was an inventor? Michael created a gravity defying dance move often referred to as the “anti-gravity lean,” in which he has both feet on the floor and leans forward nearly 45 degrees in a gravity-defying manner. This lean first appeared in the 1987 music video (see the 7:15 mark) for the song “Smooth Criminal.” The lean again appeared in the 1988 short film (see the 8:20 mark) titled “Moonwalker” during the song Smooth Criminal. Michael first performed the song and the dance move live on stage during the second leg of his 1988-1989 Bad World Tour which began in February 1988.

The anti-gravity lean was performed with wires during the music videos but these wires could not be adequately hidden from view during live performances. To accomplish this dance move on live stage, Michael developed a system where pins were embedded into the stage floor and at the right moment special shoes with ankle support and grooves in the …


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Dawn of a new Internet — mechanisms to protect your brand

Posted in Domain Names, gTLDs, Information Technology, Intellectual Property, Trademarks

Many people have not yet heard or may not understand, but the Internet will expand vastly and quickly beyond the familiar .com, .org, and .edu top level domain names. The Internet Corporation for Assigned Names and Numbers (ICANN) launched an initiative in 2008 to enable the introduction of new generic topic level domains (gTLDs). The primary reason for the expansion is to promote competition in the domain name market while continuing to ensure the Internet’s security and stability. Though ICANN’s efforts have not been without criticism, the objective is to expand the number of new gTLDs to increase competition among registry service providers and, in turn, provide greater consumer choice.

ICANN reported receiving 1,930 new gTLD applications during the application window, which closed March 29, 2012. Of those applications 1,815 are active. Most of these new gTLD applications are for generic terms such as .app, .auto, .car, .music, .shopping, .singles. But ICANN also received a subset of applications known as “.brands” created submitted on behalf of brand owners to operate as closed registries (not open to the public) designated specifically for the brand’s use — such as .apple, .chevrolet, .goodyear and .samsclub.…


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Patent troll moves forward with antitrust claim against defensive anti-troll

Posted in Intellectual Property, Patents

Can a group of defendants refuse to settle with a non-practicing entity (NPE)? Can they collectively refuse to license patents from a “troll”? Or does that refusal subject them to antitrust scrutiny? These are the issues at the heart of a Northern District of California case: Cascades Computer Innovation LLC v. RPX Corp.

Cascades manages a portfolio of patents and filed suit against a number of large technology companies for infringement. Those companies are members of RPX Corporation (RPX), a defensive patent aggregator formed to protect its members from NPEs who file infringement claims. When RPX, on behalf of its members, failed to reach a licensing agreement with Cascade, Cascade sued RPX and its members — including Dell, HTC, LG, Motorola and Samsung — claiming that defendants’ alleged collective refusal to deal with it constituted an antitrust violation.

Not only is this case unique in that an NPE, or “patent troll” in some circles, is striking out at alleged infringers with an antitrust attack, but the case was dismissed with what many thought was no hope of revival. Alas, Cascades’ amended complaint included enough additional facts to allow the case to move forward.…


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China’s new trademark law

Posted in Intellectual Property, Trademarks

China has passed a new trademark law that becomes effective May 1, 2014. The new law includes:

  1. A requirement that trademarks shall be registered and used “by the principle of honesty and credibility;”
  2. Some important changes to the trademark application and appeal processes; and
  3. As discussed here, several notable provisions designed to improve trademark enforcement in China.

A. Mechanism designed to discourage trademark hijacking by business partners

Trademark “hijacking” in China refers to the situation in which a third party registers a company’s established trademark in China, often before the company enters the Chinese marketplace, then attempts to sell the trademark registration to the company when the company begins conducting business in China. Trademark hijacking has been a serious problem in China and, in some cases, trademarks have been hijacked by individuals assisting the legitimate trademark owner in manufacturing or otherwise.…


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Revised filing fees for Europe should be in place by early 2014

Posted in Intellectual Property, Trademarks

The ability to register a trademark in the member countries of the European Union (currently 30) in a single application has been available under the Community Trademark system (CTM) since the mid-1990’s. The basic fee (900€, currently about $1,215US) for filing a CTM covers the cost of filing in up to three classes.1

The European Commission (EC) proposed revisions to the current CTM system in March 2013. Among other revisions was a change to the fee schedule. Under the proposal, fees would be payable per class — 775€ for one class, 825€ for two classes and 900€ for three classes. Renewal fees are proposed at 1,000€ for one class, 1,100€ for two classes and 1,250€ for three classes.

The EC’s proposed revisions should assist most brand owners. Under the existing system, trademark owners typically select coverage in all three classes even though the mark may only be used in a single class. For example, a business may include class 16 (paper goods) even though it only uses paper goods for marketing the actual product. By moving to a one-class system, businesses will pay less when seeking to obtain protection for only one or two classes. In addition, proposed marks will face less barriers from unused marks on the register in classes arbitrarily picked under the old system. Lastly, the need to file unnecessary oppositions (actions to remove unused marks) should decrease.

While most of the EC’s proposed revisions must be adopted by the European Parliament and the European Council, …


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FTC study on “patent troll” behavior: innovation enhancers or competition killers? Part 2

Posted in Intellectual Property, Patents

In the second of this two part series, we dig a bit deeper on the FTC’s recently proposed study on patent assertion entity (PAE) activity. In Part 1, we covered some background on PAEs and why they are singled out separately from other types of patent holders. Here in part 2, we discuss potential antitrust concerns with PAE activity, what information the FTC is seeking from PAEs and others, and — importantly — what the study means for you.

Potential antitrust issues

To place into context the entire concern with PAEs, as well as to better understand why the Federal Trade Commission is seeking the type of information it is requesting, we delineate briefly the potential antitrust concerns with PAE activity. It must be understood that a valid patent holder unquestionably has the right to exercise his/her patent, or to sit back and sue for infringement should another entity utilize the patent without permission. The mere assertion or enforcement of a PAE patent cannot, without more, constitute an antitrust violation. Nevertheless, a number of different antitrust concerns are implicated with PAE activity, the most prominent of which are presented below.

1. Acquisition and licensing of patents

A patent is an asset and, like any other asset, the more one acquires within a given market, the greater the concern that the acquirer will eventually garner market power and the ability to price its products/services above competitive levels. Or, in the patent context, license the patents above competitive levels. Though not …


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FTC study on “patent troll” behavior: innovation enhancers or competition killers?

Posted in Intellectual Property, Patents

Executive Summary

Almost half of all infringement actions brought these days are brought by patentholders that do not practice the invention, but rather by holders who seek to capitalize on the value of the patent through either licensing fees or via damage awards in infringement actions. While simply asserting patent rights cannot be an antitrust violation, the manner in which these patent holders — referred to Patent Assertion Entities (PAEs) or sometimes, pejoratively, as “patent trolls” — amass their portfolios and assert their patents can raise antitrust concerns. Given the enormous toll that patent litigation takes on our innovation economy, the Federal Trade Commission has proposed a study “to understand how PAE behavior compares with patent assertion activity by other patent owners.” This post provides background on the issue and why PAEs are singled out separately from other types of patent holders. A subsequent post will discuss potential antitrust concerns with PAE activity, what information the FTC is seeking from PAEs and others, and what the study means for you.

Background

For years, patent law and antitrust law have butted heads because patent law, which grants the patentee the right to exclude, is the antithesis of antitrust law, which seeks to increase output and maximize consumer welfare. Although the Sherman Act, the federal government’s basic antitrust law, has been hailed as the “magna carta of free enterprise,” patent law is rooted in the Constitution and accordingly has emerged victorious when the two have come into conflict. Over the past decade, …


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Who owns your website, software and other works of authorship?

Posted in Copyright, Information Technology, Intellectual Property

Many businesses outsource work such as website creation, software development or other creative tasks, engaging the services of companies or individuals experienced in these fields. Some are surprised to learn, often the hard way, that paying someone to create your website, develop software or produce other works of authorship does not mean you own the copyright in the final work product. Lack of ownership may prove costly, as a copyright owner has the exclusive right to reproduce, distribute and even modify the original work.

Copyright protection, which has been referred to as the “forgotten stepchild” of intellectual property, deserves more respect and attention than it often receives. For starters, copyright protection is rather cheap — in fact, it’s actually free (more on that below). Unlike patents, you don’t need to spend thousands of dollars on an application, hoping that the Copyright Office agrees that you created something artistic or worthy of copyright.

Copyright protects works of authorship, including: literary works; musical works; dramatic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works. 17 U.S.C. § 102(a). Though copyright does not extend to ideas, processes, systems, discoveries, etc., the tangible expression of these — e.g., computer software — is entitled to copyright protection.…


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Ammunition to rebut “obvious to try”

Posted in Intellectual Property, Patents

The recent Federal Circuit Court of Appeals decision in Leo Pharmaceutical Products, Ltd. v. Rea (Appeal No. 2012-1530, 2013 U.S. App. LEXIS 16610, decided Aug. 12, 2013) provides patent applicants and owners with some valuable ammunition in rebutting “obvious to try” based obviousness assertions against patent claims under 35 U.S.C. §103, both during patent prosecution and patent invalidity proceedings.

In Leo, an appeal from an inter partes reexamination proceeding at the U.S. Patent and Trademark Office, the court reversed the Board of Patent Appeals and Interferences’ holding of obviousness of a pharmaceutical composition on the basis that a person of ordinary skill in the art would not have been motivated to try, let alone make, the claimed invention (*14).

The court found that a claimed storage stable pharmaceutical composition comprising (1) at least one vitamin D analogue, (2) at least one corticosteroid, and (3) at least one solvent selected from a specified group, was “not simply a combination of elements found in the prior art” (*11) (three prior art references relied upon by the Board in finding the compositions obvious), but, rather, the inventors recognized and solved a problem with the storage stability of certain formulations — a problem that the prior art did not recognize and a problem that was not solved for more than a decade:…


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Crowdsourced database now available to help identify patent trolls

Posted in Intellectual Property, Patents

You received a threatening letter from what looks like a “patent troll”  demanding a licensing fee and/or royalties but you can find little or no information about the party that sent the letter.  The sending party may not even be the owner of record for the identified patent(s) at the USPTO.  You may not even be able to determine whether or not the sending party is a patent troll.  How do you identify who you are up against?  A new online crowdsourcing tool, referred to as Trolling Effects, was launched on July 31, 2013 that provides a database of demand letters and other information that can help you identify patent trolls.  The Trolling Effects database is available at www.trollingeffects.org

Patent trolls often send letters to businesses demanding payment of a licensing fee to avoid expensive patent infringement litigation. In some instances, a draft complaint is attached and the letter states that the complaint will be filed on a certain date if the licensing fee is not timely paid.  The licensing fee is typically low enough that many businesses simply pay the fee just to make the patent troll go away.  Sometimes these demand letters are sent by the thousands or even tens of thousands so that the patent trolling becomes a profitable business model even if complaints are never or rarely filed.…


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Failure to identify information as confidential or trade secret pursuant to requirements of non-disclosure agreement can preclude recovery for misappropriation under uniform trade secrets act

Posted in Information Technology, Intellectual Property

A recent decision from the Federal Circuit illustrates the perils of not following the requirements of a non-disclosure agreement (NDA) with respect to identifying information as confidential or trade secret. It is a good reminder that if you go to the trouble of preparing an NDA to protect your trade secrets, you need to follow the NDA, because a failure to do so may cost you the chance to recover under the Uniform Trade Secrets Act (UTSA).

Companies and individuals routinely enter into NDAs in order to maintain and protect the confidentiality of trade secrets that are disclosed during negotiations and business dealings. The general thought is that an NDA affords an additional layer of protection to the trade-secret owner over and above what the UTSA offers. That makes sense. But can an NDA actually supplant the UTSA? The Federal Circuit answered yes in Convolve, Inc. v. Compaq Computer Corp. The court held that if the owner of the trade secret fails to follow the NDA’s requirements for designating disclosed information as confidential or trade secret, that party cannot look to the UTSA for relief against the other party to the NDA for alleged trade-secret misappropriation.…


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Isolated genes fail while synthetic cDNA survives US Supreme Court

Posted in Patents

In a long-awaited and much-anticipated decision, the US Supreme Court today issued a unanimous opinion in Association for Molecular Pathology v. Myriad Genetics, Inc., involving the BRCA1 and BRCA2 genes relevant to detection of increased risk of breast and ovarian cancer. The Court held that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, even despite extensive research efforts that may have been conducted to determine the location of the gene in order to isolate it. 

On the other hand, the Court held that complementary DNA (synthetic DNA referred to as “cDNA”) does not present the same obstacles to patentability as naturally occurring, isolated DNA segments becuase “creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring” in that “the non-coding regions have been removed.” The Court concluded that “cDNA is not a ‘product of nature’ and is patent eligible under [35 USC] §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of DNA may be indistinguishable from natural DNA.” Finally, the Court acknowledged that this case did not involve patents on new applications of knowledge about the BRCA1 and BRCA2 genes, and many of Myriad’s unchallenged claims are limited to such applications.

The Court’s decision will end the US Patent and Trademark Office’s policy of granting patents on isolated genes, and patent practitioners will …


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Fifth Circuit affirms $44.4 million jury award for trade secret misappropriation of software developed for oil and gas industry

Posted in Information Technology, Intellectual Property

The Fifth Circuit Court of Appeals recently affirmed a jury verdict awarding $26.2 million in compensatory damages and $18.2 million in punitive damages for trade secret misappropriation of software that enabled oil and gas companies to “plan, procure and pay for complex services” online. See Wellogix, Inc. v. Accenture, LLP, Case No. 11-20816 (5th Cir. May 15, 2013). The Fifth Circuit stated: “Had we sat in the jury box, we may have decided otherwise. ‘But juries are not bound by what seems inescapable logic to judges.’ Morissette v. United States, 342 U.S. 246, 276 (1952).”

The case highlights the importance of taking steps to protect the secrecy of confidential and proprietary business information, including securing confidentiality agreements before sharing such information with other parties such as investors, customers and marketing partners. Because the plaintiff — Wellogix, Inc. — established that it had disclosed its proprietary software and technology to the defendant subject to a confidentiality agreement, it was able to meet its burden of showing that it had taken sufficient measures to guard the secrecy of its software and that the defendant had improperly relied on Wellogix’s software to pursue another business opportunity in breach of the parties’ confidential relationship.…


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Update on patent trolls

Posted in Patents

The America Invents Act (AIA), which became fully implemented March 16, 2013, revised U.S. patent law but included few reforms directed to curbing Non-Practicing Entity (NPE) or “patent troll” activity. Thus, not surprisingly, patent troll activity has continued at an alarming rate during the early months of 2013. Summarized below are the recent activities of the most infamous patent trolls.

Fortunately, the president and the legislature appear to desire additional patent reform to address patent trolls. On Feb. 14, 2013, President Barack Obama addressed patent trolls and the need for more comprehensive patent reform in a “Fireside Hangout” which is a live question and answer session hosted in a Google+ hangout. President Obama acknowledged that the reforms of the AIA “only went about halfway to where we need to go.”

On Feb. 25, 2013, the Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act of 2013 (H.R. 845) was reintroduced into the House by Rep. Peter DeFazio, D-Ore. and Rep. Jason Chaffetz, R-Utah. The SHIELD Act mandates a fee award to any party victorious on the issue of non-infringement or invalidity. This means that a company can sue for declaratory relief and recover its costs, even though the patentee never filed suit. The SHIELD Act excludes the inventors or “original assignees”, universities and their technology transfer organizations, and patentees that have a “substantial investment” in the exploitation of a patent via production or sale. The SHIELD Act requires NPEs to post a bond for the fees upon filing an infringement …


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Kirtsaeng v. John Wiley & Sons, Inc. and the ghost of Quality King

Posted in Copyright

Under a recent U.S. Supreme Court ruling, publishers of books and magazines who print and sell their publications in other countries through distributors will no longer be able to rely on U.S. copyright law to prevent others from importing and re-selling those publications in the U.S. In Kirtsaeng v. John Wiley & Sons, Inc.1, the U.S. Supreme Court fully embraced international copyright exhaustion. Going against the views (admittedly dicta) expressed in its own unanimous decision from 1998, as well as the official position of the United States in international trade negotiations, the court held that the first sale doctrine applies to copyrighted works manufactured and sold abroad under the authority of the copyright owner. Such authorized manufacture and sale, even if done outside of the U.S., exhausts the copyright owner’s right to control the importation and distribution (i.e., sale) of such works.

As a result of Kirtsaeng, copyright owners will find it difficult to prevent the unauthorized importation of their works purchased in other countries (assuming, of course, that those works were made and sold abroad with the approval of the copyright owner). Though Kirtsaeng was limited to copyright, the majority opinion suggests that the Court may be willing to embrace international patent exhaustion as well.…


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Arbitrator did not exceed his powers by awarding perpetual license in all intellectual property rights for video game

Posted in Intellectual Property, Trademarks

The Fifth Circuit Court of Appeals recently held that an arbitrator did not exceed his powers when he expanded an eight-year license to use a video game’s trademarks into a perpetual license to use all the intellectual property rights associated with the game. See Timegate Studios, Inc. v. Southpeak Interactive, L.L.C., ___ F.3d ___, 2013 U.S. App. LEXIS 7184, No. 12-20256 (5th Cir. Apr. 9, 2013).

Under the Federal Arbitration Act, an arbitrator does not exceed his powers unless “he has utterly contorted the evident purpose and intent of the parties—the ‘essence’ of the contract.” Timegate Studios, slip op. at 9. The Fifth Circuit found that the arbitrator’s remedy of a perpetual license was “rationally rooted” in the agreement between the parties and therefore reinstated the arbitrator’s award after the district court had vacated it.

The Agreement

In 2007, Timegate Studios, Inc. (“Timegate”) entered into a 46-page video game publishing agreement with Gone Off Deep, L.L.C. d/b/a Gamecock Media Group (“Gamecock”). The agreement obligated Timegate to develop a futuristic military-style video game entitled “Section 8,” and it obligated Gamecock to publish the game. As the publisher, Gamecock agreed to provide most of the investment funding for the game’s development and to manufacture, market, distribute, and sell the game after its development.…


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