Intellectual Property Outlook: Cases and Trends to Follow in 2020 – PART1

PART 1: IP ISSUES CURRENTLY PENDING BEFORE THE SUPREME COURT

In the first part of our series, we briefly summarize the intellectual property issues that the Supreme Court has already agreed to address in 2020. In particular, we provide a brief overview and key takeaways for the Supreme Court’s consideration of:

  • Whether adding “.com” to a generic mark creates a protectable trademark;
  • The scope of appeals from IPR proceedings;
  • The ability to copyright software interfaces;
  • Requirements for recovering an infringer’s profits in trademark cases;
  • State sovereign immunity from copyright infringement claims; and
  • Copyright protection for state law annotations.

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Artificial Intelligence (AI) Patents – Will the Patent Office Change the Rules?

The number of patents for inventions based on artificial intelligence, machine learning and deep learning continues to grow rapidly. Some of these inventions relate to AI technology per se, and some relate to the use of AI in specific applications, including many in healthcare, financial services and blockchain, among other industries. The USPTO has addressed various aspects of intellectual property issues with these technologies in various ways, including in an event it hosted entitled “Artificial Intelligence: Intellectual Property Policy Considerations (January 2019).” Due to some of the unique issues with these technologies, the USPTO is considering whether it should make any changes to how it handles examination of these applications. As part of this analysis, the USPTO issued a request for public comments on protection and examination of these inventions. Last fall, the USPTO issued a Federal Register Notice, 84 Fed. Reg. 166 (Aug. 27, 2019) entitled, “Request for Comments on Patenting Artificial Intelligence Inventions.” Soon after, the USPTO issued another Notice, 84 Fed. Reg. 210 (Oct. 30, 2019) entitled, “Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation,” which expanded the scope of its inquiry (from just AI patents) to further cover copyright, trademark, and other intellectual property rights impacted by AI. In a third notice, the PTO extended the comment period until January 10, 2020.

If you are focused on developing technology that uses AI, machine learning or deep learning, now is the time to weigh in if you want to influence the discussion. We will continue to follow this issue and provide updates. If you have questions on patents or other legal issues in these areas, please contact us.

Intellectual Property in the Cannabis Industry – Protecting Innovations And Products, Part I (Trade Secrets)

This post originally appeared as an article in Cannabis Business Executive on December 5, 2019.

A cannabis product business is no simple venture. Cannabusinesses have to innovate to remain competitive just like any other company, but in an industry plagued by complex and changing federal and state regulations of marijuana (aka cannabis). At the heart of every innovation lies potentially protectible intellectual property (IP) rights and that is no different in the cannabis industry. In our two-part article, we provide cannabis entrepreneurs with an overview of the IP protections available to them for their innovations. In Part I, we discuss trade secret protection. In Part II, we will cover patent protection. In both parts, we will address choosing between trade secret and patent protection. Continue Reading

Left Empty Handed: Valve Shut Down on Written Prior Art, Highlighting Importance of System Art

System art is of increasing importance in patent disputes despite being frequently overlooked or “left for later” in many cases.  A recent decision in the Ironburg Inventions v. Valve Corp. case highlights the importance of system prior art, particularly as IPR success rates have dropped from their high points in 2012-15. Continue Reading

3 Steps in Furtherance of Avoiding Devastating Spoliation Sanctions in Trade Secret Misappropriation Litigation

Preservation of electronically stored evidence (ESI) may be critical in trade secret cases. When a dispute revolves around whether a defendant accessed and/or transmitted the plaintiff’s trade secret material maintained in an electronic file, the file’s metadata can have evidentiary importance. Similarly, the defendant may have an interest in the plaintiff’s own disclosures of the alleged trade secret because such disclosures may negate its status as a trade secret (e.g., by showing the plaintiff did not take reasonable steps to keep it secret). The defendant may also want to focus on preserving documents that show that it independently developed the alleged trade secret information. Continue Reading

Patent Attacks Against Open Source Intensify!

We previously reported on how popular open source has been under attack from patent assertion entities. The attacks continue. The GNOME Foundation recently acknowledged that it was sued for patent infringement by Rothschild Patent Imaging LLC. The allegedly infringing product is Shotwell, a free and open source personal photo manager. Neil McGovern, Executive Director for the GNOME Foundation says “We have retained legal counsel and intend to vigorously defend against this baseless suit.” The suit alleges infringement of a single patent 9,936,086 titled “Wireless Image Distribution System and Method.” Continue Reading

Today’s Special: Validity Goulash – Serving Up 101 in the Mechanical Arts

A divided Federal Circuit, in a precedential opinion, upheld a lower court’s finding that the claims of US Patent No. 7,774,911 ineligible for patenting under Section 101 because the claims are directed to a law of nature. The ‘911 patent claims relate to methods of manufacturing vehicle driveshaft assemblies. Continue Reading

California’s Fair Pay to Play Act: This is Only The First Quarter

We previously wrote about California Senate Bill 206, the “Fair Pay to Play Act,” back in April, and now Gov. Gavin Newsom has signed that bill into law.[1] The law becomes effective on January 1, 2023. After numerous revisions to the bill since our last post, here is a quick look at the final product.

The new Fair Pay to Play Act allows California student-athletes to earn compensation from licensing their name and image and to obtain professional representation by lawyers and agents to assist with that effort, all without losing scholarship eligibility or amateur status under the National Collegiate Athletics Association’s (NCAA) Division I and II eligibility criteria. Importantly, the law specifically prohibits colleges, athletic associations and intercollegiate conferences from paying such compensation to prospective student-athletes. Continue Reading

Perils of Waiting: PTAB’s Precedential Opinion Panel Designates Two More Decisions Rejecting 315(b) Arguments Regarding Time Bars

In two decisions recently designated as “precedential,” the PTAB rejected two theories raised by petitioners for why the service of a complaint should not trigger Section 315(b)’s one-year time bar for filing a petition. In the first case, the Board rejected the petitioner’s argument that a complaint must be served by a plaintiff that has standing to assert the patent. In the second case, the Board rejected the petitioner’s argument that the service of the complaint must effect personal jurisdiction. Both case results stem from the Federal Circuit’s decision in Click-to-Call Technologies, L.P. v. Ingenio, Inc., where the court held that the plain and unambiguous meaning of Section 315(b)’s time bar merely requires the service of a complaint allege patent infringement, and thus leaves little room for finding exceptions to the time bar’s application.  Continue Reading

“Addressing Video Game Claims Under the Phillips Standard at the PTAB”

Last fall, the PTAB modified its procedures for IPR claim construction, eliminating the use of the broadest reasonable interpretation standard. Since the rule change last year, companies challenging the validity of patents at the PTAB are required to use the Phillips plain and ordinary meaning standard. Continue Reading

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