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

Italian Film Composer “Scores” for Authors

The Second Circuit issued a remarkable decision on termination rights under Sections 203 and 304(c) of the Copyright Act that seemingly, whether knowingly or otherwise, limits the Act’s extraterritorial reach. Ennio Morricone Music Inc. v. Bilio Music Group Ltd., Second Circuit, No 17-3595-cv, decided August 21, 2019 (“Morricone II”). The foregoing provisions of the Copyright Act allow authors to terminate grants after a certain stated period of years, generally after 35 years for grants made by an author. This termination right is unavailable to works-made-for-hire. Identifying the “author” is critical. If “for hire,” the “author” is the employer or commissioning party, and the individual creator, or his or her statutory heirs, may not terminate. Continue Reading

Celebrity Entertainer Sues Over Video Game Avatar

As real-world celebrities continue to expand the reach of their persona into the digital realm, the potential benefit for advertisers, game developers and esports event promoters is exceedingly high. But with increased opportunity comes increased risk.

A New York Supreme Court recently addressed this risk when it construed the State’s right of publicity statute[1] in a dispute over an NBA 2K18 video game avatar. In Champion v. Take Two Interactive Software, Inc., celebrity basketball entertainer Phillip “Hot Sauce” Champion sued the video game developer, alleging violation of his right to privacy for Take-Two’s use of his name and likeness. The Court ultimately dismissed the lawsuit, but not before it provided a helpful discussion of New York’s publicity statute and its modern application to the esports industry. Continue Reading

New PTAB Guide Creates Uncertainty as to Multiple Petition Situations

The USPTO published its second update to the PTAB Trial and Practice Guide last month. The section addressing procedures for addressing multiple challenges to a patent is a new and noteworthy addition.

In the new section addressing “parallel petitions challenging the same patent” by the same petitioner, the Board states that, “one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Continue Reading

Don’t Spill Your Trade Secrets: Protecting Your Competitive Advantage in the Food and Beverage Industry (Part 2 of 2)

In the race to get new products to market, food and beverage businesses sometimes neglect their critically important intangible assets — their valuable trade secrets. Through advance planning and diligence, businesses in that industry can avoid losing the competitive advantage afforded to them by their proprietary information. In our last post we discussed the 7 potential areas of trade secrets in this industry. In this post, we discuss how to protect the secrecy of your proprietary information, which is required to enforce information as trade secrets. Continue Reading

Don’t Spill Your Trade Secrets: Protecting Your Competitive Advantage in the Food and Beverage Industry (Part 1 of 2)

In the race to get new products to market, food and beverage businesses sometimes neglect their critically important intangible assets — their valuable trade secrets. Through advance planning and diligence, businesses in that industry can avoid losing the competitive advantage afforded to them by this proprietary information.

Famous Food & Beverage Trade Secrets. Some food and beverage companies have been very successful in protecting their trade secrets and capitalizing on them. One of the most valuable trade secrets in history is the formula for Coca-Cola. The drink was invented in 1886 and the recipe was passed down by word of mouth until 1919, when it was first written down. At that time, a group of investors took out a loan to purchase the company and the formula was provided as collateral. The written formula was locked in a bank until it was moved into a purpose-built vault, with a palm scanner, a numerical code pad and enormous steel door. According to Coca-Cola, only two senior executives, bound by non-disclosure agreements (NDAs), know the formula at any given time. Neither these executives’ names nor positions have ever been released. Over the years, some have claimed to have cracked the original formula. However, none have been confirmed as the official formula and Coca-Cola’s formula remains a well-guarded and valued trade secret. Continue Reading

The U.S. Trademark Office Opens The Door to Registering Certain Cannabis Trademarks

On May 2, 2019, the United States Trademark Office issued new Examination Guidelines for goods and services associated with cannabis and cannabis-derived products and services legalized under the 2018 Farm Bill.[1] This crack in the federal armor against the cannabis economy opens the door for the federal registration of trademark rights and is an important step toward normalizing the nation’s laws governing cannabis and cannabis-related business activities in states where such products are legal. Continue Reading

Converting an IPR Loss into a District Court Win

It is very common to defend against a claim of patent infringement by litigating in the district court and the PTAB in parallel. The most straightforward-way for the defendant to win is to persuade the PTAB that the asserted patent is invalid. But, that is becoming more difficult as Director Iancu pushes the PTAB to apply greater scrutiny to petitions in order to address patent owner criticism that the PTAB proceedings are unfair. However, a recent decision disposing of a non-practicing entity’s long-running litigation against Ubisoft highlights how a defendant that ultimately lost on an issue before the PTAB can use the loss to their advantage in district court. Continue Reading

Framing Your Pitch: A Lesson from the TTI v. IBG Cases

The U.S. Court of Appeals for the Federal Circuit recently issued three interesting, related opinions interpreting and applying the “technological invention” exception to Covered Business Method Review (“CBM Review”). These opinions serve as a reminder that litigation often turns on an advocate’s effectiveness in framing (or re-framing) a critical issue of law before the court.

The three Federal Circuit opinions are:

Continue Reading

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