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Patent News
No attorney fees for IPRs
In the continuing fight between Dragon IP and the cable and broadband media industry, Magistrate Hall ruled on 8/16 that even when there is an exceptional case, defendants cannot cover attorneys' fees for IPRs under 35 U.S.C. 285. See Dragon Intellectual Property LLC v. DISH Network LLC, 1-13-cv-02066-233 (D..Del. Aug. 16, 2021). The court cited the Federal Circuit's 2020 decision in Amneal Pharms, which held that proceedings before the board of patent appeals are not "cases" within the meaning of 35 U.S.C. Sec. 285. More.Increased Estoppel
Estoppel under 35 USC. §315
3/7/2022 The Federal Circuit issued two decisions that expansively read the scope of IPR estoppel. Cal. Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 989 (Fed. Cir. 2022) (holding that estoppel extends to any arguments that could have been raised by the petitionner); Intuitive Surgical, Inc. v. Ethicon LLC., 25 F.4th 1035, 1041, 1042 (Fed.Cir.2022) (estoppel bars petitionner from maintaining second IPR filed the same day as another to reach a final written decision). MoreExpert Watch
Expert qualifications
1/21/2022 -- To offer technical opinions in patent cases, experts must be at least persons of ordinary skill in the art. See Kyocera Senco Indus. Tools Inc. v. ITC, No. 20-1046 at *11 (Fed. Cir. Jan 21, 2022). In Kyocera, the ALJ found that the level of ordinary skill in the art required a person with a minimum of two years experience designing power nailers. He also "found that Kyocera failed to preserve any challenge to the level of ordinary skill in the art and that [Kyocera's expert] lacked that skill" Id. at 10. Patent litgants (and experts) who treat the level of ordinary skill in the art as an afterthought, do so so at their peril. MoreVenue News
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Judge Albright clarified that the Court will not require that venue be proved as to each accused product. “This Court has not previously, and will not now, adopt a product-by-product inquiry for venue.” See Kirsch Research and Development LLC v. BlueLinx Corporation, 6-20-cv-00316 (W.D.T.X. Jul. 19, 2021). A key factor in the Court’s decision not to dismiss count II of the complaint appeared to be that the plaintiff alleged some act of infringement, even if not every action needed to practice the method claims, took place in the district. MorePatent
AI and Inventorship
9/2/2021 -- A federal judge in the Eastern District of Virginia recently ruled that the term "inventor" under the Patent Act is limited to natural persons. Stephen Thaler, the creator of an AI named DABUS, appealed the denial of patent applications 16/534,350 and 16/542,532 by the USPTO for failing to file a required inventorship oath, based on Federal Circuit holdings that "inventors must be natural persons." See Univ. of Utah v. Max-Plank-Gesellschaft, 734 F.3d 1315, 1323 (Fed. Cir. 2013); Beech Aircraft, Corp. v. Edo Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993). Though Thaler was recently issued an AI-invented patent in South Africa, thus far the European Patent Office has reached the same conclusion as the USPTO--that an inventor of a patent must have legal capacity.
Copyright
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9/8/2021 -- The Fifth Circuit recently affirmed dismissal of a copyright infringement lawsuit by Michael J. Bynum against Texas A&M University and its employees on state sovereign immunity grounds. This ruling was not a surprise, in light of the Supreme Court's 2020 decision overturning the Copyright Act's abrogation of state sovereign immunity. See Alice v. Cooper, 140 S.Ct. 884 (2020).
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Fair Use
8/24/2021 -- The Second Circuit Court of Appeals reiterated its previous holding that Andy Warhol's series of silkscreen prints based on a photograph taken by Lynn Goldsmith was not fair use. The District Court had previously found Warhol's adaptation transformed the image from a vulnerable, uncomfortable person to an iconic, larger-than-life figure, and was thus "transformative." 322 F.Supp. 32, 312 326 (S.D.N.Y. 2019). The Second Circuit reversed, finding examination of the artists' subjective intent in the fair use analysis is error. Rather, the Court said the judge "must examine whether the secondary work's use of its source material is in service of a 'fundamentally different new' artistic purpose or character, such that the work stands apart from the 'raw material used to create it." Warhol v. Goldsmith, 19-2420-cv (2d Cir., Aug. 24, 2021).Copyright
Works with AI generated content
On December 12, 2023, in one of its first rulings since publishing its AI guidance, the Review Board of the U.S. Copyright Office refused registration to an applicant who used an AI to transform a photo he had taken, finding that though the photo itself could be the subject of a copyright, textual direction as to a type of transformation to perform on the photo were merely the idea, rather than the expression of the work generated by the AI.
Trade Secrets
Business Insights
Businesses that take measures to ensure that their employees understand the kinds of information that are protected as trade secrets, that they follow confidentiality policies are more likely to succeed in protecting their trade secrets in Court. In Texas, and in many other jurisdictions, Courts apply the six-factor test adopted in the Restatement and followed by TUTSA and the UTSA, to assess the existence of trade secrets. Though precise identification is not required, an inability of the business articulate trade secrets and to distinguish them from "general knowledge" is problematic. MoreTrade Secrets
Third Circuit DTSA Decision
Pleading your trade secrets in a trade secret dispute can present a dilemma for the trade secret holder. Plead too few details, and the plaintiff risks dismissal or delay in the litigation. Plead too many, and the complaint itself can destroy the very trade secrets that plaintiff is trying to protect. Reversing a fourth dismissal of a DTSA complain for lack of specificity, in Oakwood Laboratories, LLC v. Thanoo, 19-3707, the Third Circuit attempted to clarify the pleading requirements for claims made under the Defend Trade Secrets Act, 18 U.S.C. §1836(b). More