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
Posted in Trade SecretsPreservation 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!
Posted in Patents, Tech LicensingWe 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
Posted in PatentsA 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
Posted in PatentsIn 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”
Posted in PatentsLast 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
Posted in CopyrightsThe 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
Posted in Digital Media, GamingAs 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
Posted in PatentsThe 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
