Wells Fargo and USAA to Settle $300M Litigation

“Wells Fargo has reached a settlement in a pair of lawsuits brought by the US Automobile Association (USAA), after two juries found the bank liable for patent infringement,” reports Rory O’Neill in World Intellectual Property Review’s News.

“USAA filed two separate lawsuits against Wells Fargo at the US District Court for the Eastern District of Texas for infringing patents covering mobile deposit technologies.”

“In both cases, juries at the Texas court found Wells Fargo liable to have USAA’s IP, and the bank was found to be liable to pay a total of $300 million.”

Read the article.




Biglaw Partners Accused of Blowing Off Intellectual Property Laws

“Two Littler Mendelson lawyers are accused in a lawsuit of misappropriating a ‘voluminous amount’ of a nonprofit’s password-protected intellectual property,” reports Debra Cassens Weiss in ABA Journal’s News.

The lawsuit says “the lawyers misappropriated more than 2,100 pages of content over a period of 17 months.”

“The material includes memoranda, templates, checklists, guides and other resources produced exclusively for the group’s members. Law firms cannot be members of the center, which advises employers on workplace law.”

Read the article.




Samsung Sued for Patent Infringement on Contactless Payment Method

“RFCyber Corp. filed a complaint for patent infringement against defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. … alleging that Samsung infringed its contactless payment method via its Samsung Pay service on its mobile devices,” reports Kirsten Errick in Law Street’s Tech.

“According to the plaintiff, Samsung has infringed at least claim 1 of the ’218 patent by having products with an ‘e-purse,’ allegedly using the plaintiff’s patented method. The ‘method comprising: providing a portable device including or communicating with a smart card pre-loaded with an emulator configured to execute a request from an e-purse applet and provide a response the e-purse applet is configured to expect, the portable device including a memory space loaded with a midlet that is configured to facilitate communication between the e-purse applet and a payment server over a wireless network, wherein the e-purse applet is downloaded and installed in the smart card when the smart card is in communication with the payment server…’ furthermore, the e-purse applet and the payment server communicate over a network to create a secure channel for various operations.”

Read the article.




Nordictrack Owner Sues Peloton for Allegedly Stealing Bike Features

“The maker of NordicTrack and other in-home fitness brands has sued Peloton, claiming its cycling rival stole features for its newest stationary bike,” reports Jordan Valinsky in CNN Business.

“The lawsuit filed by Icon Health and Fitness on Thursday alleges patent infringement. Icon claims that two new features in Peloton’s Bike+ — a swiveling touchscreen and the bike automatically changing resistance during classes — were ‘developed and used by Icon well before Peloton.'”

“Icon said it has a patent pending on the swivel screen and hold a patent on the resistance feature, which Peloton calls “auto-follow.” Both features are used on Icon’s current line of products, which also includes iFit and FreeMotion brands that make several varieties of gym equipment including bikes and treadmills.”

Read the article.




Dish Network Sued for Patent Infringement

Cedar Lane Technologies filed a complaint for patent infringement against Dish Network alleging infringed patents-in-suit through its Movies for Purchase feature, reports Kirsten Errick in Law Street Media’s Tech.

“The patents relate to playback of network audio on demand, creating and managing playlists, management of owned and unowned inventory, and translating a device command.”

“Dish Network purportedly infringed the ’443 patent by “making, using, offering to sell, selling and/or importing” its exemplary accused products, such as its Movies for Purchase feature as part of the Video on Demand menu.”

Read the article.




Small Photo Credit Removal May Result in Big Damages

“Omitting a small print photo credit can get you in big trouble under the copyright laws,” writes Jim Burger, Justin Mulligan, Mike Nepple, Michael Parks and Mark Sableman in Thompson Coburn’s Insights.

“That’s what happened recently when a court affirmed an award of almost $74,000 against BuzzFeed, because its reporter had copied a photo from the New York Post website and removed the photographer’s name.”

“Gregory Mango, the plaintiff, had authorized the New York Post’s use of his photo, and the Post provided the usual small print photo credit line (known as “gutter credit”) to him. A few months later, a BuzzFeed reporter copied Mango’s photo from the Post website and used it in a BuzzFeed article about the person depicted in the photo. BuzzFeed replaced the photo credit to Mango with the name of the law firm that represented the person depicted.”

Read the article.




Express Mobile Asserts Patent Infringement Suits Against Nine Leading Technology Firms

“Express Mobile, Inc. (XMO), a pioneering leader in Web 2.0 and mobile technology, announced that today it has filed nine lawsuits against some of the biggest names in e-commerce and technology for patent infringement. The defendants include Atlassian, DropBox, eBay, Expedia, FaceBook, Google, HubSpot, Microsoft, and Squarespace,” reports Express Mobile Inc. 

“XMO’s Chair and founder Steven H. Rempell first developed the patents at issue in the late 1990s.”

“Mr. Rempell’s foundational patents are fundamental to modern solutions architecture and design, particularly for Web 2.0 applications such as mobile and desktop website generation, social media and e-commerce websites, among other industries.”

Read the article.




Trade Secret Misappropriation Judgment Reversed

“A tax consultant should not have been found liable for misappropriating trade secrets after he used his ex-employer’s allegedly proprietary ‘tax arbitrage’ strategy in providing services to its former clients, the 1st U.S. Circuit Court of Appeals has ruled,” reports Eric T. Berkman in New England In-House.

“The Puerto Rico-based plaintiff, TLS Management and Marketing Services, helped mainland U.S. clients profit by availing themselves of Puerto Rico’s lower tax rates through a series of complex transactions between TLS and the client.”

“After defendant Ricky Rodriguez, a TLS executive, left the company, TLS accused him of misappropriating trade secrets by utilizing the company’s strategy (which TLS referred to as its “U.S. Possession Strategy” or “the Strategy”) to provide tax services to former TLS clients using TLS documents with which the clients provided him. The company also accused him of misappropriating trade secrets by downloading the company’s Capital Preservation Report — or CPR — documents to analyze client tax situations.”

Read the article.




Apple Told to Pay $506 Million in Texas Patent Trial Verdict

“Apple Inc. was told by a federal jury in Texas to pay Optis Wireless Technology $506.2 million in patent royalties related to 4G technology in the iPhone and other devices,” reported by Susan Decker and Blake Brittain of Bloomberg shared via Bloomberg Wire in The Dallas Morning News’ Business/Technology.

“The jury in Marshall found that five patents were infringed. It also found that the infringement was willful, which means District Judge Rodney Gilstrap could increase the amount by as much as three times the amount set by the jurors.”

“Optis and its partners in the case, Panoptis Patent Management, and Unwired Planet LLC, claimed that Apple’s smartphones, watches, and tablets that operate over the LTE cellular standard were using its technology. Apple, which argued the patents were invalid, pledged to appeal.”

Read the article.




Can One Have Too Many Patents?

“As is common with a blockbuster drug, AbbVie’s Humira faced an antitrust challenge from third-party payers,” writes Richard D. Kelly in Oblon’s Publications.

“The third-party payers filed an antitrust action claiming AbbVie’s patent strategy stifled competition by forcing prospective competitors to settle on terms allowing Humira to enjoy a monopoly long after patent protection should have ended. The complaint alleges that AbbVie cornered the market for Humira and its biosimilars by obtaining a thicket of patents which allowed it to gain the market power it needed to prevent competitors from entering the U.S. market (violation of Sherman Act section 2). It used this market power to enter into settlement agreements with potential competitors to keep their products out of the U.S. market in return for early launch dates in Europe, also an important market which they termed a pay-for delay and market division (violation of Sherman Act section 1). ”

Read the article.




GOOGLES Wins Right to Sue Google

“The US Court of Appeals for the Second Circuit vacated and remanded a district court’s dismissal of a trademark dispute for lack of subject matter jurisdiction, noting that the dispute arose under contractual standing, which is not a jurisdictional issue. SM Kids, LLC v. Google LLC, Alphabet Inc.,” reported by Jodi Benassi in McDermott, Will & Emery’s Trademarks.

“In 1997, Googles Children’s Workshop registered the trademark GOOGLES and the internet domain name www.googles.com. The website launched in 1998 and focused on children’s education and entertainment. That same year, Google adopted its name, and in 2004 it registered the GOOGLE mark. In 2005, the founder of Googles Children’s Workshop sued Google for trademark infringement.”

“In 2007, the Googles Children’s Workshop founder assigned all rights in the mark GOOGLES to Stelor Productions. In 2008, Stelor and Google settled the trademark infringement dispute, with Google agreeing to not intentionally make material modifications to its then-current offering of products and services in a manner that would likely create confusion in connection with the Children’s Workshop mark GOOGLES. Specifically, Google agreed not to create, develop and publish children’s books and fictional children’s content with the title of ‘GOOGLE or a GOOGLE-.'”

Read the article.




Ferrari Just Lost the Trademark Rights to its Most Iconic Car

“Italian supercar maker Ferrari has lost the trademark rights to the world’s most expensive car and arguably the most iconic car in its storied history, the 1962 Ferrari 250 GTO,” reports Michael Taylor in Forbes’ Transportation.

“Though the Ferrari 250 GTO only cost US$18,000 in the United States when they were new, one of them set a new record for the world’s most expensive car in 2018 when it sold privately for US$70 million.”

“Ferrari lost its trademark to the shape of the 250 GTO by falling foul of the European Union Intellectual Protection Office’s (EUIPO) ‘Use It Or Lose It’ rules.”

Read the article.




A Primer and Checklist for Protecting Trade Secrets and Other Legitimate Business Interests

“The ability to protect trade secrets (and other legitimate business interests, including customer goodwill) has been hit by a perfect storm caused by the current coronavirus pandemic,” warns Russell Beck in Fair Competition Law.

“Accordingly, this post provides practical guidance for companies on how to manage their trade secrets (and other legitimate business interests) – both generally and particularly while employing a remote workforce – thereby avoiding preventable problems by having a plan in place to address problems when they arise, which they inevitably will. Specifically, it explains general aspects of trade secret protection programs, provides a detailed guide to the creation of a trade secret protection program, and identifies where to focus efforts now to address the current circumstances and the expected new ‘abnormal,’ as restrictions begin to be lifted.”

Read the article.




Jeff Dunham Tries to Bring Curtain Down on T-Shirt Company

Comedian, Jeff Dunham, “plays a bland everyman who brings to life a series of over-the-top puppet characters, some of which have offended politically correct sensibilities – there’s a skeletal terrorist, a crotchety old geezer, a jalapeño pepper with a Mexican accent, a flamboyant pimp, and so on,” reported in BakerHostetler’s blog.

“These characters are Jeff Dunham’s living.”

“The value of Dunham’s puppet partners is at the center of a deeply exasperated complaint he filed in the Central District of California in April. Dunham goes after the defendants, Raymond Lei and his novelty fashion company ooshirts… Allegedly, Lei and company have spent years profiting from Dunham’s copyrights and trademarks by printing his various characters and their catch phrases, as well as images of Dunham himself, on T-shirts and other products.”

Read the article.




If it’s a Trade Secret, Define “Reasonable Effort”

Jonathan Chisholm of InfoGoTo discusses “how innovators and developers can protect their intellectual property in the form of trade secrets, and how a date- and time-stamped audit trail of their IP development can be protected by a trusted third-party.”

He analyzes four method of IP Protection: Patents, Trademarks, Copyrights and Trade Secrets to help protect the idea with reasonable efforts.

It’s not easy bringing an idea to life but protecting these ideas (in the form of trade secrets) can be.

Read the article.




California Court Overturns Quincy Jones’ Win in Michael Jackson Lawsuit

“A California appeals court on Tuesday overturned most of a 2017 jury verdict awarding Quincy Jones $9.4 million in royalties and fees from the Michael Jackson estate over the use of Jones-produced Jackson hits in the concert film ‘This Is It’ and two Cirque du Soleil shows,” reports Andrew Dalton in Insurance Journal’s News.

“The state’s 2nd District Court of Appeal ruled that the jury misinterpreted a contract that was the judge’s job to interpret anyway. It took away $6.9 million that jurors had said MJJ Productions owed Jones for his work on ‘Billie Jean,’ ‘Thriller,’ and more of Jackson’s biggest hits.”

“The appeals court found that the jury wrongly granted Jones money from licensing fees, wrongly went beyond the 10% royalty rate Jones was owed for record sales, and incorrectly granted Jones money for remixes of Jackson’s master recordings.”

Read the article.




What If a Border Agent Seeks Your Smartphone That Includes Client Secrets?

JD Supra discusses what an attorney is “to do if a customs agent asks to peruse the attorney’s smart phone? Or if a customs agent asks the attorney to identify the clients that attorney is meeting or working on behalf of in the foreign country? Such questions can create a tension for attorneys between their duty to comply with international travel directives and their duty to preserve confidential or privileged client information in their possession.”

“Trips abroad are becoming more common across various practices.”

“Notably, attorneys are not required by the rules of professional conduct to comply with” ABA recommendations. “Whether attorneys adopt these recommendations in their own practices will depend on the type of information attorneys have in their possession, as well as the reasonableness of taking certain precautions.”

Read this article for some traveling tips.




American Axle: Does Patent Subject Matter Eligibility Depend on Enablement?

Intellectual property IPFitch, Even, Tabin & Flannery LLP will present a free webinar, “American Axle: Does Patent Subject Matter Eligibility Depend on Enablement?,” featuring Fitch Even attorneys Stanley A. Schlitter and Andrew C. Wood.

The event will be on Thursday, January 30, 2020, at 9 am PST / 10 am MST / 11 am CST / 12 noon EST. It will also be available as an on-demand webinar after the presentation.

In American Axle & Mfg. Inc. v. Neapco Holdings LLC, the Federal Circuit affirmed a district court ruling that American Axle’s drive shaft patent is ineligible under 35 U.S.C. § 101 because the claims covered an application of a law of nature. American Axle’s petition for rehearing en banc has attracted several amicus briefs, some of which argue that this decision places in jeopardy the validity of many process patents for making physical structures and adds a § 112 enablement requirement to § 101 subject matter eligibility. In general, the decision has created further uncertainty about what a patentee needs to do to meet the requirements of § 101.

During this webinar, the presenters will discuss the following:
• The district court and Federal Circuit decisions in this case
• Arguments presented in the amici briefs
• How American Axle comports with the USPTO’s patent eligibility guidance
• Strategies for litigators and prosecutors regarding Alice in view of American Axle

Register for the webinar.

 

 




Breach of Contract Claim Does Not Arise Under Patent Law

The U.S. Court of Appeals for the Federal Circuit reversed a district court decision that retained jurisdiction over a breach of contract action, finding that the action did not sufficiently implicate issues of patent law and instead was simply a state law contract case for past royalties, reports McDermott Will & Emery via Lexology.

One of the parties to a case involving patents and royalties filed suit, alleging breach of contract and other equitable state law claims.

The defendant asserted counterclaims of breach of contract, fraud, negligent misrepresentation, restitution and breach of fiduciary duty. Both parties relied on diversity to establish subject matter jurisdiction.

Read the article.

 

 

 




PTAB Judge Appointments Ruled Unconstitutional by Federal Circuit

By Eric P. Carnevale and Thomas M. Sullivan
Lando & Anastasi, LLP

In Arthrex v. Smith & Nephew, Inc., issued October 31, 2019, a panel of the U.S. Court of Appeals for the Federal Circuit held that the appointment of Administrative Patent Judges, charged with presiding over proceedings before the Patent Trial and Appeal Board, was unconstitutional. While this decision will require fundamental changes the way APJs may be removed from office, similar cases in recent years suggest that the changes need not significantly disrupt the business of the PTAB.

Arthrex is the owner of a patent that was challenged in inter partes review by Smith & Nephew, Inc. and Arthrocare Corp. Review was instituted, and a panel of three APJs issued a final written decision finding the challenged claims to be unpatentable as anticipated by the prior art. On appeal, Arthrex challenged the appointment of the APJs as violating of the Appointments Clause of Article II of the U.S. Constitution.

Under the Appointments Clause, officers of the United States must be nominated by the president and confirmed by the Senate. However, the Constitution also provides for the appointment of inferior officers by the President alone or the heads of departments. The distinction between officers and inferior officers implicates important considerations related to the separation of powers. It ensures that individuals vested with significant amounts of governmental authority wield that authority with the consent and supervision of officials answerable to the electorate.

The Constitution does not define the differences between principal officers and inferior officers. Thus, it has been left to the courts flesh out those distinctions. Courts look beyond the nominal rank of the officer, and attempt to discern the extent of direction and control appointed officials have over the challenged officer or employee. One non-exclusive test applied by the courts considers (1) whether an appointed official has the power to review and reverse the officers’ decision; (2) the level of supervision and oversight an elected official has over the officers; and (3) the appointed official’s power to remove the officers.

Upon review, the Federal Circuit determined that Administrative Patent Judges were principal officers, not inferior officers, and that their appointment violated the Appointments Clause. APJs have authority to review and, in the appropriate circumstances, revoke patent rights, without having those decisions reviewed by any principal officer. Moreover, the Director of the U.S. Patent & Trademark Office has only a limited ability to remove APJs, on the ground of misconduct that has an adverse effect on the Patent Office.

The Federal Circuit’s solution was to sever the portion of the Patent Act giving APJs protection from removal. The Court reasoned that even if the director still lacked authority to review the decisions of APJs, the right to remove APJs without cause would provide significant restraint on their decision making, commensurate with the level of authority given to inferior officers.

The Federal Circuit’s decision is not without precedent, and that history suggests Arthrex need not have significant immediate effects on the administration of the PTAB. In the 2018 case Lucia v. SEC, the Supreme Court considered a similar challenge to the appointment of SEC Administrative Law Judges who, at the time, were appointed by SEC staff members rather than the SEC as the head of a department. The Supreme Court held that the ALJs were officers and not mere employees, and therefore their appointment by SEC staff was unconstitutional. But before the Supreme Court’s opinion had even issued, the SEC issued an order in its capacity as the head of a department, ratifying the appointments of all current ALJs as would be required of inferior officers. The Patent Office could similarly ratify the appointment of its APJs to avoid disruption.

The limitations against removing ALJs in the Lucia case were intended to safeguard the judges’ independent decision making from undue influence by political appointees. That was considered especially important where the judges were adjudicating matters in which the agency that employed them was a party. The protection from removal sought to ameliorate the perceived evils of comingling the adjudicative and prosecutorial functions of an agency. Similar considerations of independent adjudication underly the removal protections for APJs severed by the Federal Circuit. But it is unclear whether the consequences of any perceived diminished independence of APJs is more than speculative.

In the near term, the Patent Office will likely have to consider procedures for resolving further challenges to Board decisions under the Appointments Clause. Under the Federal Circuit’s ruling, any decisions issued by unconstitutionally appointed APJs are open to challenge, if the issue is timely raised on appeal. This decision could affect any decisions in IPRs, post grant reviews, covered business method patent reviews and ex parte patent prosecution that are now on appeal, or that may be appealed, that were recently decided by a panel of the PTAB comprising unconstitutionally appointed APJs. Arthrex’s case will be remanded to a new panel of constitutionally appointed APJs, and a new hearing will be granted.

Thomas M. Sullivan is a partner at intellectual property law firm, Lando & Anastasi, LLP. He can be reached at TSullivan@LALaw.com or 617-395-7024. Eric P. Carnevale is an association at Lando & Anastasi, LLP. He can be reached at ECarnevale@LALaw.com or 617-395-7045.