Tag: IP Law

Federal Court Rules That Patent Infringement Can Violate Antitrust Laws

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Patent infringement can be considered anticompetitive conduct under federal antitrust law, according to a recent ruling issued by the U.S. District Court for the Eastern District of Texas.

This ruling arose out of a dispute between Retractable Technologies, Inc. (Retractable) and Becton, Dickinson and Company (BD),1 in which Retractable alleges, among other claims, that BD’s infringement of Retractable’s patents foreclosed competition and maintained BD’s monopoly power in the hypodermic syringe market, thereby violating Section 2 of the Sherman Act.2

Retractable manufactures patented safety syringes and IV catheters, which protect against needlestick injuries by automatically retracting the needle after injection.  According to Retractable’s complaint, BD is the leading U.S. manufacturer of hypodermic syringes and holds a very large share of the relevant market.  Retractable claims that BD took steps to protect its dominant position after Retractable’s entry into the market, including by introducing an inferior line of safety syringes that infringe on Retractable’s patents.  Retractable contends that these actions, together with other exclusionary conduct including unlawful bundling and loyalty discounts, impeded the adoption of new and novel safety syringes, including those of smaller rivals such as Retractable, substantially lessening competition and maintaining BD’s dominance.  Retractable also alleges false advertising and other unfair competition claims.

To prove a violation of Section 2 of the Sherman Act, a plaintiff must demonstrate that the defendant (1) possesses monopoly power, and (2) acquired, enhanced, or maintained that power by exclusionary or anticompetitive conduct.3 In one of several motions to dismiss, BD asked the court to find that, as a matter of law, patent infringement can never be considered “exclusionary or anticompetitive conduct,” and therefore cannot be the basis of a Section 2 monopolization claim.  BD argued that no court has ever found patent infringement to be an “anticompetitive” act under Section 2 and that Retractable’s claim makes no economic sense, because patent infringement actually increases competition by making more products available to consumers.

On September 9, 2013, U.S. District Court Judge Leonard Davis adopted the recommendations of U.S. Magistrate Judge Roy S. Payne’s August 5 Report and Recommendation and issued an order denying BD’s motion.  Judge Davis agreed with Judge Payne that the only binding precedent offered by BD in support of its arguments held that patent infringement is not an injury recognized under the Sherman Act,4 but this has nothing to do with patent infringement as anticompetitive conduct.  Both judges noted the U.S. Supreme Court’s statement in U.S. v. American Tobacco Co. that the Sherman Act covers “every conceivable act which could possibly come within the spirit or purpose of the prohibitions of the law, without regard to the garb in which such acts were clothed.”5 Judge Payne further explained in his Report that while patent infringement often increases competition and benefits the end consumer despite harming a specific competitor, in this case Retractable alleges that the effect of BD’s patent infringement was to decrease competition by keeping BD’s inferior products on the market and preventing the sale of other, better quality safety syringes.

The complex interactions between intellectual property rights and the antitrust laws have received significant attention recently in various contexts, such as pay-for-delay settlements in pharmaceutical patent cases and abusive enforcement of standard essential patents.  The decision in this case adds an arrow to the quiver of companies with patented technology that are trying to compete in a market with a large and established player.  Companies with high market shares should take note that this ruling may expose them to additional antitrust risks, and should carefully consider whether any of their business practices would support a Section 2 monopolization claim against them.

1 Retractable Technologies, Inc., et al. v. Becton, Dickinson and Co., Case No. 2:08-CV-00016 (E.D. Tex.).

2 15 U.S.C. § 2.

3 United States v. Grinnell Corp., 384 U.S. 563 (1966).

4 A plaintiff must prove antitrust injury in order to recover damages.

5 221 U.S. 106, 181 (1911).

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It’s the Words, Not the Ideas, that Are Copyrightable

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The U.S. Court of Appeals for the Seventh Circuit dismissed a lawsuit claiming that Elton John and his songwriter partner Bernie Taupin had plagiarized their hit song “Nikita” from a song called “Natasha,” explaining that copyright law does not cover general ideas, but only the specific expression of an idea.  Guy Hobbs v. Elton John, Case No. 12-3652 (7th Cir., July 17, 2013) (Manion, J.).

Guy Hobbs composed “Natasha,” a song about a love story between a British man and a Ukrainian woman.  In 1983, Hobbs registered his copyright in the song and then sent the song to several music publishers, one of them being Elton John’s publisher, Big Pig.  However, the song was never published.  John released the Nikita song in 1985, wherein the singer from the west describes his love for a girl named Nikita, who he saw through the wall and who was on the other side of the line.  The copyright in Elton John song was registered with the U.S. Copyright Office by Big Pig.

Hobbs claimed that he first learned of the Nikita song in 2001.  He alleged that the lyrics infringed his copyright of Natasha and sought compensation from John and Taupin.  Hobbs later sued John, Taupin, and Big Pig for copyright infringement.  Hobbs claimed that his work was entitled to copyright protection because his selection and combination of the elements in Natasha constituted a “unique combination.”  Hobbs argued that the number of similar elements between the two works supported a claim for copyright infringement.

The district court held that the elements identified by Hobbs were not entitled to copyright protection when considered alone.  Hobbs had not established a “substantial similarity” between Natasha, a song about a British man and a Ukrainian woman who did meet, and John’s Nikita song describing an East German woman peering through the Berlin wall at a man she never met.  The district court also rejected Hobbs claim that the elements in the song created a unique combination that was copyrightable.  The district court held that although the theme of the two songs had some similar elements in common, the elements identified were not protectable under the Copyright Act.  Hobbs appealed.

The 7th Circuit agreed, concluding that “Natasha and Nikita simply tell different stories, and are separated by much more than small cosmetic differences.”  The 7th Circuit stated that the Copyright Act does not protect general ideas, but only the particular expression of an idea.  In addition, the Copyright Act does not protect “incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.”  The 7th Circuit concluded that “as a matter of law Natasha and Nikita are not substantially similar because they do not share enough unique features to give rise to a breach of the duty not to copy another’s work.”

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Google, Yahoo, and Ad Networks Agrees to Set of Best Practices to Combat Online Piracy

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The United States Intellectual Property Enforcement Coordinator Victoria Espinel recently blogged about a new effort to combat online piracy of intellectual property.  The broad-based effort attempts to leverage the participation of several large internet/publishing companies (Google, Yahoo, Microsoft, AOL and Condé Nast), advertising networks (24/7 Media, Adtegrity) and the Interactive Advertising Bureau.  The parties have agreed to voluntarily adopt a set of best practices to remove advertising from websites that are primarily engaged in copyright piracy (movies, video games, music, books, etc.) or selling counterfeit goods.

In addition to efforts by companies to combat a similar problem using the Copyright Alert System, which we have previously covered, the current agreement takes aim at shutting down the profitability (and it is hoped, the major incentive) of these piracy websites to attenuate their proliferation.

The parties have agreed to implement these procedures and establish a system whereby a rights holder will send an initial informal complaint to one of the participating ad networks alleging that the website at issue is “principally dedicated to” engaging in copyright piracy and/or counterfeiting goods.  Further, the website must have no “substantially non-infringing uses.”  Upon receipt of a complaint, the ad networks will investigate and determine whether to take action, which can range from requesting the website cease from engaging in the alleged activity, to an embargo on advertisements placed by that ad network on the website until such time as the alleged violations are removed, or ultimately, removing the website from the ad network altogether.  While not required to, the ad network may also consider any evidence provided by the website owner that it is either not principally dedicated to counterfeiting or copyright piracy, or has substantial non-infringing uses.  Any such “counter notice” should include the content prescribed in the Digital Millennium Copyright Act (17 U.S.C. §512(g)(3)).  In addition, the participating ad networks will be certified by the Interactive Advertising Bureau’s Networks and Exchanges Quality Assurance Guidelines.

It is important to note that the burden to initiate the process is squarely on the rights holder, the guidelines explicitly noting that (i) there is no burden on the ad networks to police or actively monitor the websites on which their ads are placed; and (ii) by participating in this program, the ad networks do not prejudice their ability to maintain any “safe harbor” status they may otherwise be entitled to.

These best practices certainly have the critical mass to succeed.  The critical question, however, will be the quality of the analysis by the ad networks in response to allegations of piracy or counterfeiting, and the efficacy of this avenue of redress as perceived by the rights holders.  Regardless, this agreement, which may be refined going forward, is another step towards alleviating some of the pressure search engines have been under recently to take more proactive steps toward protecting intellectual property.

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Next Time, Buy the CDs, Re: Illegal Music Download

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Following the lead of other courts addressing statutory penalties for illegal music downloading, the U.S. Court of Appeals for the First Circuit upheld a $675,000 fine for downloading and distributing 30 songs.  Sony BMG Music Entertainment  v. Tenenbaum, Case No. 12-2146 (1st Cir., June 25, 2013) (Howard, J.).

For over eight years, Tenenbaum ignored the warnings of his father, his college and the music industry and continued to download and distribute thousands of songs he knew were copyrighted.  In 2007 five record companies sued Tenenbaum under the Copyright Act for statutory damages and injunctive relief.  The record companies only pursued claims for 30 songs, though Tenenbaum admitted at trial he had distributed as many as 5,000 songs.  The trial court held as a matter of law that Tenenbaum had violated the Copyright Act and the jury found his violations were willful.  The jury awarded $22,500 for each of Tenenbaum’s thirty violations (15 percent of the statutory maximum), for a total award of $675,000.  The district court reduced the award to $67,500 finding that the jury’s award violated due process.  The First Circuit vacated the district court’s judgment holding that the principle of constitutional avoidance required the court to first address the issue of remittitur before determining the due process question.  On remand the district court determined remittitur was inappropriate and that the original $675,000 award comported with due process. Tenenbaum appealed the decision solely on due process grounds.

musical notes

The Court reviewed two questions: what is the correct standard for evaluating the constitutionality of an award of statutory damages under the Copyright Act; and (b) did the $675,000 award violate Tenenbaum’s right to due process?

The 1st Circuit looked to St. Louis, I.M. & S. Ry. Co. v. Williams, not BMW of North America, Inc. v. Gore, as the proper standard for reviewing the constitutionality of statutory damages under the Copyright Act, noting that Gore applies to punitive damages and the concerns regarding fair notice to the parties of the range of possible awards were “simply not present in a statutory damages case where the statute itself provides notice of the scope of the potential award.”  Under Williams, a statutory damage award only violates due process “where the penalty prescribed is so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.”

The 1st Circuit examined the purpose of the Copyright Act’s statutory damages and Tenenbaum’s behavior to determine if $675,000 metWilliams’ standard for constitutionality.  The 1st Circuit found that in 1999 Congress increased the Copyright Act’s minimum and maximum statutory awards specifically because of new technologies allowing illegal music downloading.  The record companies presented evidence that Tenenbaum’s activities had led to the loss of value of its copyrights and reduced its income and profits—precisely the harm Congress foresaw.  The Court went on to find that Tenenbaum’s conduct was egregious—he pirated thousands of songs for a number of years despite numerous warnings.  The Court held that “much of this behavior was exactly what Congress was trying to deter when it amended the Copyright Act.”  The 1st Circuit rejected Tenenbaum’s argument that the damages award had to be tied to the actual injury he caused, relying on Williams to find that the damages were imposed for a violation of the law and did not need to be proportional to the harm caused by the offender.

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International Trade Commission Addresses Use of Standard-Essential Patents in Section 337 Investigations

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The International Trade Commission (ITC) addressed for the first time the issue of whether infringement of a patent that has previously been declared “standard-essential” may form the basis for either a limited exclusion order or cease-and-desist order under a § 337, ruling that nothing in the ITC’s enabling statute prevents issuing an exclusion order, even if the complainant is under an obligation to license the patent.  Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers, Inv. No. 337-TA-794, (U.S. ITC, June 4, 2013) (ITC, per curiam); Commissioner Pinkert, dissenting).

The complainant, Samsung Electronics, held two patents that it had previously declared to be “standard-essential” to the Universal Mobile Telecommunications System promulgated by the European Telecommunications Standards Institute (ETSI).  ETSI’s Intellectual Property Rights policy required Samsung to offer licenses to such patents on fair, reasonable and non-discriminatory (FRAND) terms.  After licensing negotiations between Samsung and the respondent, Apple, broke down, Samsung filed a complaint at the ITC requesting a limited exclusion order against Apple’s mobile communication products.  After the administrative law judge ruled, on an initial determination (ID), that none of the patents at issue were valid and infringed, the ITC determined to review the ID and sought views from both the parties and the public as to whether Samsung’s declaration of the patents at issue as “standard-essential” should affect either the ITC’s analysis of whether there was a violation of § 337 or what relief should be provided.

In its final determination, the ITC found one of the two patents to be both valid and infringed, and that the proper relief was a limited exclusion and cease-and-desist order directed to the infringing articles.  The ITC first rejected Apple’s argument that the Commission should not investigate an alleged violation of § 337 based on infringement of patents subject to a FRAND undertaking, ruling that under § 337(b)(1), the ITC is required to investigate any alleged violation based upon a complaint under oath, whether or not those patents have been declared standard-essential.  The ITC also rejected Apple’s theory that the Commission “cannot address infringement of standard-essential patents other than in the exceptional scenarios such as where a potential licensee has refused to pay a royalty after a U.S. court has determined that royalty to be FRAND, or where no U.S. court has jurisdiction over the potential licensee in order to set a FRAND rate,” ruling that the remedies provided under § 337 could be imposed in addition to any damages or injunctions available from a district court.

The ITC further determined that Apple had not “properly argued any affirmative defense that would preclude the Commission from finding a violation based on assertion of a declared-essential patent,” such as a breach of contract, promissory estoppel, laches or fraud  The ITC ruled that even if Apple had offered sufficient evidence that the FRAND declaration was a legally enforceable obligation, the patents at issue were actually necessary to practice the standard and that Samsung was required to grant irrevocable licenses under FRAND terms to any party, it still would not have found in Apple’s favor, because the parties’ final offers were sufficiently close to each other that Samsung did not violate its obligation to negotiate in good faith.  Importantly, the ITC found that Samsung was not under any obligation to make an initial offer that was FRAND, because “the SSO intends the final license to be accomplished through negotiation” and “even if it were true that a FRAND agreement that requires Apple to pay Samsung ultimately is not reasonable, the offers that Apple criticizes do not necessarily demonstrate that Samsung has violated its FRAND obligations by failing to negotiate in good faith” (emphasis in original).  Finally, the ITC rejected the theory that whether a patent has been declared standard-essential should be considered when the public interest is analyzed, finding that its consideration of the public interest is limited solely to the four factors listed in § 337(d)(1).

Uncommonly for a Commission opinion, Commissioner Dean Pinkert wrote a dissent arguing that the ITC should not issue an exclusion order based on Samsung’s obligation to license the patents on a FRAND basis, that the evidence indicated Samsung was unwilling to make a FRAND licensing offer with respect to the standard-essential patents and that the absence of a FRAND offer should have a bearing on whether relief under § 337 is in the public interest.  Specifically, Commissioner Pinkert found that it was neither fair nor non-discriminatory for a FRAND-encumbered patent holder to require licenses to non-FRAND-encumbered patents as a condition for licensing the FRAND-encumbered patent.  Commissioner Pinkert also would have found that the statutory language of § 337(d)(1), as well as the legislative history of the statute that “any evidence” of price gouging or monopolistic practices on the part of the complainant would be a proper basis for denying exclusion, suggests that the section should be read broadly.

Practice Note:  The Commission’s rejection of a per se rule barring exclusion orders for patents that have been declared standard-essential is likely to lead to have a number of effects, including increased litigation of standard essential patents at the ITC, counter-suits requesting that a district court rule determine what royalty rate is FRAND and/or requesting that a complainant be enjoined from proceeding before the ITC, presidential review taking on increased importance and potential legislative action to curb the ITC’s jurisdiction.

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Design Patent Basics

Lewis & Roca

Design patents are often a forgotten form of intellectual property despite the fact that they have been available to inventors and designers for over 150 years.  A design patent protects a new and original ornamental design of a useful product.  For example, a design patent can protect the shape of a bottle or the pattern on the bottom of a shoe or the ornamental design of a unique-looking bird house.  Design patents can be incredibly valuable to a company since they protect “iconic” designs ranging from Apple’s iPhone graphics to the original glass Coca-Cola bottle.

Design patents are a cost-effective mechanism to add value to a company and combat copying of products. The typical cost for obtaining a design patent is anywhere from $1,500 to $3,000.  For a company whose long-term goal is to sell its products or technology in the future, a collection of design patents can significantly increase the selling price.  But the timeframe of that value is limited to the 14-year term of the design patent itself.

Requirements for patentability are that the design be new, original and ornamental.  The design cannot be completely functional as there must be some significant aspect of the design not dictated by function alone.

Design Patent Application Tips:

General

Claim the broadest possible design and not just one embodiment of the design.  Because the scope of the design patent claim is the drawings, the most important features of the design patent are the drawings.  In order to broaden protection, think about filing more than one design patent applications, each covering a different aspect of the design.  Or filing several design patent applications, each one covering a separate embodiment of a design.

Drawings

There is no limit on the number of views an applicant can include in a design patent application.  The application should include as many views “as necessary” to fully disclose every novel feature of the invention.  Depending on a number of variables such as disclaimed features, alternate positions, and number of embodiments, the number of views required may vary greatly.  There is a standard number of views that is a good starting point.  They are perspective view, front view, back view, top view, bottom view, and side views (for example, left side view and right side view).

Shading

Proper use of shading is critical in design patent application drawings.  The drawings should be provided with appropriate surface shading which shows clearly the character and contour of all surfaces of any three-dimensional aspects of the design. Surface shading is also necessary to distinguish between any open and solid areas of the design. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Lack of appropriate surface shading in the drawing as filed may result in a rejection of the application. Additionally, if the shape of the design is not evident from the disclosure as filed, addition of surface shading after filing may be viewed as new matter and not allowed. New matter is anything that is added to, or from, the claim, drawings or specification, that was neither shown nor suggested in the original application.

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Brain Spray and the Law

Womble Carlyle

Now that we can capture and use the signals emitted by human brains, we should consider whether brain signals are public property. If your face and voice become available to the public through use, is the same true for your thoughts, when they can be read by others?

Several recent news items have illustrated the progress humans have made in understanding the brain’s workings and harnessing an active brain for practical purposes. For example, this week, Duke University researcher Miguel Nicolelis used microchips and the internet to connect the brains of two mice on different continents, so that the thoughts of one can influence the actions of the other. Much of Dr Nicolelis’s work involves creating an exoskeleton that a paralysed person could operate with brain signals.

Similarly, University of Pittsburgh researcher Andrew Schwartz has been working since 2006 to find ways for a person to control a robotic arm with only brain signals. In February 2013, surgeons implanted four microchips in a paralysed patient’s brain that translate her brain’s signals into movement in robotic equipment. 60 Minutes and ABC News showed a video of the Pittsburgh patient feeding herself ice cream through brain signals to a robotic arm.

Such scientific work involving directed brain signals seems like science fiction, but the technology is available right now, and will only improve over time, and soon will be available commercially. Right now, the most rudimentary brain-driven technology can be purchased. High-end toy emporium Hammecher Schlemmer sells a “Telekinetic Obstacle Course” that use focused brain waves to manoeuvre a ball through an obstacle course. The game comes with a headband to read your brain signals and then wirelessly transmit those signals to the game’s air fan, which increases or decreases speed depending on your signal, blowing a foam ball around an obstacle course.

For example, Australian scientist and entrepreneur Tan Le, the founder of Emotiv Lifescience, has created a headset that serves as an interface for reading the wearer’s brainwaves, making it possible to control virtual and physical objects with directed thoughts. Eventually the headset will be conditioned for diagnostic use, but current products using the brain-interface headset for videogames, allowing users to drive virtual race cars with their concentrated thoughts.

Modern science has identified two types of “brain spray”, or signals that can be harnessed from outside of a person’s skull. The first is the directed thoughts described in the examples above, where certain voluntary brain signals, created by the subject concentrating on a goal or action, are read and translated by either a device worn by the subject or by microchips placed in the subject’s head. Research into this field, including US government funded research by DARPA, may lead to practical solutions allowing wounded veterans or other people with disabilities to grasp, drive, walk and talk again.

This type of brain spray will lead to legal concerns. For example, if a wounded soldier is offered a limb that responds to his thoughts, the company providing the limb will want to capture information from the electronics that capture brain signals, both for understanding and improving the equipment and for monitoring its use. Could a disabled person say “no” to the company who was offering a newly functional life, or would he be forced to sign away his brain spray for benefit of science and a company providing the equipment.

We all know that our signals from laptops and smartphones are captured by any number of companies – telephone signal providers, hardware manufacturers, app developers, banks and payment businesses – when we undertake actions or transactions over the internet. There is no reason that the same rules would not apply to our directed thoughts when our computing devices are controlled by focused brain signals. Google is already testing computing in the form of eyeglasses that could easily be equipped to read such brain spray and turn it into both action and data. Our thoughts would be available to our service providers.

The other brain spray that can be captured and turned to practical use is translation of brain activation signals currently read by functional magnetic resonance imagining machines (fMRI). These signals are more intrusive than the focused brain signals described above, because the fMRI provides pictures of what part of a human brain is activated by situations or stimuli. The fMRI pictures can easily be interpreted as triggers for various emotions. Because certain emotions trigger activity in specific parts of the brain, fMRI brain spray comes close to showing what the subject is feeling about the situation he is in.

Scientists currently read and interpret the emotional and logical meanings of fMRI signals from the human brain. In a 2008 article for Atlantic Monthly, Jeffrey Goldberg submitted himself to brain readings where scientists used MRI scanning to observe which areas of Goldberg’s brain reacted to certain images. The scientist showed Goldberg pictures of personal, political and cultural figures, recording his brain’s involuntary reactions with the MRI machine and noting when his brain activated in areas indicating affection and affinity for certain pictures (Goldberg’s wife and Bruce Springsteen) and revulsion at other pictures (Osama bin Laden).

This technology is attractive to corporations wanting to know how to stimulate your urge to buy their products and to see how you react to their advertising. However, do you want companies to know this much about you? Current law holds that if you have no reasonable expectation of privacy, then you cannot stop anyone from harvesting information from you. For example, when you are out on the public roads or when you walk up to an Automated Teller Machine at the bank, you are subjecting your appearance, your facial expressions and even your body itself, to scrutiny, photography, recordation and information capture by other people (or the bank) who share your public space.

If your appearance, your voice, and even your DNA is available to everyone in public (many US courts allow police to collect a suspect’s DNA in public places without a warrant), then why would this rule not extend to your brain spray when you enter the public area at a time that mobile fMRI technology or other brain signal capture technology is commercially available? Exposing your brain signals in public may be no different from exposing your face or your voice at the same time. Why would you have a reasonable expectation of privacy in your brain spray when you know it can be read by anyone with the right equipment? Many will argue that once your body is in a public space, then it can be read by the government or business in any way that they are able.

If there were limits to the use of this technology to read your exposed brain signals, situational rules would have to be developed. For example, when fMRI technology is cost-effective and practical to use from a distance, should you automatically submit to brain scanning just by walking into a certain store, casino, bank or government building? Will companies provide notice before scanning you? Will the scan data be linked to your credit card purchases to identify you, linked to the uniform identifier in your smartphone, or linked to RFID tags in the products you buy?

This technology also has national security applications for interpreting malice in sensitive situations. The government may be able to read a suspect’s brain activity to identify intent to act before the crime takes place, scanning banks and airports for signs of potentially criminal intent. But our criminal law is based on punishment for actions, not thoughts or intentions. Everyone has intemperate thoughts of anger, frustration and fantasies of outrageous exploits, but people manage to keep those ideas in their heads and not act on them. How much do you want the government to know about your unfiltered thoughts, once those thoughts can be read from outside your head?

Once the technology is widely available, anyone could use its invasive and interpretive powers. Employers may examine their workers for hostile thoughts toward management or sympathetic thoughts toward labour organisers. Colleges can probe their applicants’ level of enthusiasm for learning. The military could test for signs of homosexuality in recruits without asking or telling. Lawyers and investigators in divorce cases would have a new avenue to examine unfaithful behaviour. How quickly would enthusiastic opposition dig up the thought crimes of political candidates?

Our laws are inadequate for addressing these issues or protecting the privacy of our brain spray. Current privacy law in the United States would not prohibit harvesting brain spray and would not even require an individual’s permission to do so. The current American privacy laws relating to reading your biometric measurements and physical condition only apply to body signs taken for health care purposes.

If a hospital records your blood type or your DNA to test for disease, those records are private and you have the right to keep them from being used for other purposes. However, a reading of your body, including your DNA and your brain spray, is not protected from transmission or sale between companies if the reading was taken for security, marketing or intelligence purposes. The recorded thoughts showing your excitement at the perfect little black dress or those used to power your prosthetic arm may be transferred to anyone. The law leaves you vulnerable.

Brain spray is the ultimate prize in the larger security and privacy debate concerning what personal facts may be captured by commercial or governmental interests. Why bother asking you what you think about a politician or a product when a company can read it directly from your brain? Without legal change, finding out who really loves “mom”, apple pie and America could soon be as simple as a head examination.

Originally published March 22, 2013 in the International edition of Intellectual Property Magazine Online

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Impact of Trademark Trial and Appeal Board (TTAB) Rulings in Court Decisions

Katten Muchin

The US Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) provides, among other things, a forum for trademark owners to oppose the issuance of a certificate of registration for a mark filed by a third party which it believes is confusingly similar to its registered mark. Although the TTAB can issue a decision as to whether two marks are confusingly similar such that one of them should not be entitled to registration, the issue of whether one mark infringes another is beyond the scope of a TTAB proceeding and is instead left to the courts.

Therefore, when a trade mark owner is formulating its enforcement strategy, a common question that arises is whether a TTAB decision holding that two marks are confusingly similar would be dispositive when the same two marks are the subject of a trademark infringement claim before the courts. This issue was recently addressed by the Eighth Circuit in the case of B&B Hardware, Inc v Hargis Industries, Inc and the conclusion reached in this case can be helpful to brand owners contemplating their approach to brand enforcement.

B&B Hardware, the owner of a trade mark registration for the mark Sealtight covering a fastener product that is used predominantly in the aerospace industry, had successfully opposed a trade mark application filed by Hargis for the mark Sealtite covering a line of self-drilling and self-taping screws that are commonly used in the construction of metal buildings. Subsequently, B&B Hardware sued Hargis, making claims of trade mark infringement and unfair competition. The District Court rejected B&B Hardware’s claims and in doing so decided not give preclusive effect to the TTAB decision (that is, the Court did not allow the decision to preclude the issue from being re-litigated) which held that there was a likelihood of confusion between the two marks.

B&B Hardware appealed the decision to the Eighth Circuit arguing that the TTAB’s determination that there is a likelihood of confusion between the two marks should have been given preclusive effect by the District Court on the claim of trade mark infringement which, in turn, would have necessitated a finding by the District Court in B&B Hardware’s favour. The Eighth Circuit, however, affirmed the District Court’s decision, holding that regardless of whether the TTAB is an agency whose decisions are entitled to preclusive effect, the decision rendered in the opposition proceedings was not so entitled. Specifically, the Eighth Circuit ruled that preclusive effect should not be given to the TTAB decision at issue because the likelihood of confusion test applied by the TTAB when considering B&B Hardware’s opposition to Hargis’ attempt to register the Sealtite mark did not equate to a determination of likelihood of confusion for purposes of analysing a claim for trade mark infringement.

The decision issued by the Eighth Circuit was not without dissent, however. The dissent took the position that when an administrative agency is acting in a judicial capacity and resolves disputed issues of fact which the parties had the opportunity to litigate, the courts should give the decision issued preclusive effect. In short, the dissent believed that Hargis should not have had the opportunity to re-litigate the dispute at the District Court level after already having done so before the TTAB.

This case, therefore, stands for the proposition that a ruling by the TTAB may not be serve as the final decision on the existence of a likelihood of confusion between two marks. However, as indicated by the dissent, the holding in this case may not be universally applied so careful consideration should be given by a trade mark owner when pursuing a claim of trade mark infringement when the marks at issue were already the subject of a TTAB decision.

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The “Dot-Brand” Explosion: What You Need To Do Now

Dickinson Wright LogoEarlier this year the company that manages the global internet address system (the Internet Corporation for Assigned Names and Numbers, or ICANN) accepted the first round of applications for new “generic top level domains,” or gTLDs – the part of an address that goes to the right of the dot. Most businesses register domain names that use the familiar “.com” suffix or one of a handful of other available options such as “.org” or “.biz.” The new program makes it possible to register a business name, a trademark – indeed, virtually any word in any language – as a TLD in its own right. Depending on whose crystal ball you consult, this Dot-Brand initiative could revolutionize the way the internet works, or hopelessly complicate it, or both.

The initial application window recently closed. The list of applications offered a few surprises, a number of omens for the future – and some important action items for brand owners who did not apply for a gTLD this time around.

  • One surprise was the sheer number of applications. Originally, ICANN was anticipating 500 or so. In the end there were almost 2,000 (at $185,000 apiece!) The unexpected volume slowed down the application process, and will surely slow the review and approval process even more.
  • Many of the applications were for famous brand names (.chevy, .nikon, .walmart) and several were for geographic locations (.paris, .nyc, .amersterdam). The most interesting ones were for generic terms like .art, .tech, and .store, which will be of interest to a great many people. Lots of brand owners in the auto industry, forexample, may want to be part of the “.cars” domain.
  • Not surprisingly, many of these generic domains are the subject of multiple applications: thirteen for .app; seven each for .mail and .news; nine for .shop. There will be a lengthy dispute-resolution process, probably culminating in an old-fashioned auction to the highest bidder, to see who ultimately gains control of these domains.

A recent survey of attorneys responsible for protecting trademarks found that while 91 percent were aware of the new gTLD program, only 36 percent had read the Applicant Guidebook, which explains how the process work. That Guidebook, and the initial application list, suggests some important steps you should take now to protect your brand:

1. Make sure no one has applied for a domain that incorporates one of your trademarks. A formal objection period for addressing such issues is now open and will run until January 2013.

2. Identify “generic” domains of interest, and investigate the applicants and their business plans. If you’re in the financial services sector, for example, you’ll want to know who’s behind the applications for .bank, .broker, .finance, .fund, .insurance, .investsments, .lifeinsurance, .loans, .money, .mutualfunds, and others. A 60-day comment period, open to anyone, runs through August 12; if there is something ICANN ought to know about one or more of the applicants or proposed domains, now is the time to tell them.

3. Start planning for defensive domain-name registrations in appropriate generic and geographic domains. Depending on the business you’re in, you may want to make sure you are the first to register your company name and key trademarks within appropriate domain names – before someone else does. The “someone else” could be a competitor, or just an old-fashioned cyber-squatter of the sort brand owners have been dealing with in the .com sphere for years. And don’t forget about domains like “.sucks,” where having someone else register your brand could be embarrassing.

The best defense is a good offense. Starting in October 2012, for a small fee you will be able to list your brand names in ICANN’s Trademark Clearinghouse; anyone that tries to register your brand as a domain name will be advised of your rights.

SAP Joins Patent and Trade Office against Versata in Eastern District of Virginia

Schwegman Lundberg Woessner

You may recall that Versata sued the Patent Office in the Eastern District of Virginia to challenge the PTAB’s decision to institute a CBM review of Versata’s U.S. 6,553,350 patent.  Versata Development Group, Inc. v. Rea, 1:13-cv-00328-GBL-IDD (E.D. VA).  It turns out that SAP America, Inc. and SAP AG (collectively “SAP”) filed a Motion to Intervene in that suit.  On June 24, 2013, Judge Gerald Bruce Lee granted SAP’s Motion to Intervene over Versata’s objections (the PTO did not oppose the motion).  The motion was granted under Federal Rule of Civil Procedure 24(b).  SAP is now an intervenor in the lawsuit.

SAP also filed a motion to dismiss the suit under Federal Rule of Civil Procedure 12(b)(1), alleging a lack of subject-matter jurisdiction.  That motion has not yet been decided; however, this is a very important case for all post-grant practitioners because it will likely give guidance as to which types of PTAB decisions may be appealed.   First, SAP argues that the decision is not appealable under the AIA, in particular 35 U.S.C. § 324(e).  Second, SAP contends that a decision to institute trial is not appealable because it is not a final decision by the PTAB; it is the very beginning of the PTAB trial.  In its Memorandum in Support of Motion to Dismiss, SAP stated:

First, Versata invokes the APA to challenge a decision by the Director of the United States Patent and Trademark Office (“PTO”) made on her behalf by the newly-created Patent Trial and Appeal Board (the “Board”). 37 C.F.R. §§ 42.2, 42.4. Specifically, Versata challenges the Board’s initial decision to institute a post-grant review proceeding. But under the America Invents Act (“AIA”), Congress expressly precluded judicial review of the exact decision that Versata seeks to challenge: “The determination by the Director whether to institute a post-grant review . . . shall be final and nonappealable.” 35 U.S.C. § 324(e). Simply put, the APA does not apply—and this Court cannot exercise jurisdiction—where, as here, a “statute precludes judicial review.” 5 U.S.C. § 701(a)(1).

SAP’s Memorandum in Support of Motion to Dismiss, page 1 (italics in original).

This is certainly an interesting development.  We will stay tuned into the future events of this matter.

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