Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Back on Track?: Obtaining Software Patents Using New Patent Office Guidance,” featuring Fitch Even attorneys Timothy R. Baumann and George N. Dandalides.

The event will be on Wednesday, March 20, 2019, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT. It also will be available as an on-demand webinar after presentation.

Obtaining patents for software-related inventions has become more difficult in recent years, in the U.S. and throughout the world. However, recently released USPTO guidance addressing patent eligibility under 35 U.S.C. § 101 and § 112, among other developments, offers some amount of much-needed clarity and direction.

During this webinar, presenters will share information and insights on:
• USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance
• USPTO’s 2019 Guidance on Examining Computer-Implemented Functional Claim Limitations
• How to use the recent guidance fruitfully, including claim-drafting strategies and evaluation of example claims
• Drafting strategies for filing software patent applications in foreign jurisdictions
• What the future may hold for software patentability

Register for the webinar.

Reuters is reporting that a U.S. federal judge has issued a preliminary ruling that Qualcomm Inc. owes Apple Inc. nearly $1 billion in patent royalty rebate payments, though the decision is unlikely to result in Qualcomm writing a check to Apple because of other developments in the dispute.

Reuters’ Stephen Nellis writes that a district judge in California ruled Thursday that Qualcomm must make the rebate payments to Apple, which for years used Qualcomm’s modem chips to connect iPhones to wireless data networks.

“In general, the contract factories that built Apple’s iPhones would pay Qualcomm billions of dollars per year for the use of Qualcomm’s patented technology in iPhones, a cost that Apple would reimburse the contract factories for,” according to the article.

Read the Reuters article.

In a post for Above the Law, Tom Kulik of Dallas-based Scheef & Stone discusses what happens when a bankruptcy debtor exercises its statutory right to reject a contract.

The U.S. Supreme Court recently heard oral arguments in Mission Product Holdings Inc. v. Tempnology, LLC to address this question that has plagued the intersection of intellectual property and bankruptcy law for decades.

He writes that the supreme Court’s ruling on the issue “may draw a clear line for trademark licensors and licensees in the event of bankruptcy (a good thing), or leave a blot on the issue by finding that the issue is moot (a bad thing).”

Read the article.

A Texas jury awarded $43 million to Intellectual Ventures I LLC after finding telecom heavyweights T-Mobile and Ericsson Inc. infringed on the company’s patents used for wireless services for the LTE network. The jury awarded $34 million against T-Mobile and $9 million against Ericsson, according to a post on the website of Androvett Legal Media & Marketing.

The jury also determined T-Mobile and Ericsson failed to provide convincing evidence that Intellectual Ventures’ claims involving the patents were invalid. The case was decided on Feb. 8 following a one-week trial in the U.S. District Court for the Eastern District of Texas in Marshall.

“We are grateful for the jurors’ attention in this case and their decision in favor of our client,” said Johnny Ward of Ward, Smith & Hill PLLC, who represented Intellectual Ventures. “This verdict shows you can’t infringe on another company’s patents and expect to get away with it.”

The patents-in-suit trial included U.S. Patent Nos. 6,628,629, 7,412,517 and RE46,206 owned by Intellectual Ventures for wireless transmissions. Bellevue, Washington-based Intellectual Ventures is a global invention and investment business that creates, incubates, and commercializes impactful inventions.

Also representing Intellectual Ventures were Ward, Smith & Hill partners Claire Abernathy Henry and Andrea Fair, along with co-counsel Martin J. Black and Kevin M. Flannery of Dechert LLP.

The case is Intellectual Ventures I LLC v. T-Mobile USA, Inc., T-Mobile US, Inc., Ericsson Inc., Telefonaktiebolaget LM Ericsson, case number 2:17-cv-577, in the U.S. District Court for the Eastern District of Texas.

WWE Hall of Famer Booker T. Huffman has filed a copyright infringement suit against the publishers of the video game franchise “Call of Duty,” claiming its character “Prophet” is too similar to the “G.I. Bro” comic book action hero character he created based on one of his early pro wrestling personas, according to a post on the website of Androvett Legal Media & Marketing.

The 2018 release Call of Duty: Black Ops 4 prequel depicts the pre-cybernetics Prophet which bears striking similarities to G.I. Bro, a special operations soldier created and copyrighted by Huffman from the Houston suburb of Friendswood.

“When seen side-by-side there can be no question that this character was copied from G.I. Bro. From the hair, body type and clothing, right down to facial expressions, the similarities are too profound to be an accident,” said Micah Dortch of the Dallas office of the Potts Law Firm. Huffman is represented by Dortch and Houston attorney Patrick Zummo with the Law Offices of Patrick Zummo.

Since the 2015 release of the G.I. Bro and the Dragon of Death Preview and G.I. Bro and the Dragon of Death comic books, Huffman has appeared at a number of events dressed as G.I. Bro to promote the titles.

In the first three days of its release by Activision Publishing Inc., Activision Blizzard Inc., and Major League Gaming Corp., Call of Duty: Black Ops 4 sold more than $500 million in physical copies and downloads. Total sales to date are thought to exceed $1 billion.

“Booker T. has devoted a significant amount of time and money creating and organically growing his G.I. Bro character,” said Dortch. “That entrepreneurial investment should not be erased by such a blatant act of copyright infringement by a gaming juggernaut.”

The case is Booker T. Huffman v. Activision Publishing, Inc., Activision Blizzard, Inc., and Major League Gaming Corp., filed in the U.S. District Court for the Eastern District of Texas.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Navigating Open Source Risk with Tools for Usage Evaluation and License Compliance,” featuring Philip Odence of Black Duck On-Demand and Fitch Even partners Amanda Lowerre O’Donnell, Joseph F. Marinelli, and Steven G. Parmelee.

The event will be Thursday, February 28, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12 noon EST.

Software is increasingly incorporated into products released into the market, and more companies are releasing mobile applications every day. As the percentage of open source content in use rises, the legal and security risks accompanying such use needs to be actively managed. During this webinar, presenters will provide background information and actionable advice that will assist in handling open source.

Among other insights, presenters will discuss the following:

• Assessing license compliance and compatibility
• Leveraging tools to monitor and assess risks associated with software deals and open source software incorporated into a company’s code
• Creating programs and policies to effectively manage a company’s incorporation of open source into its code
• External web service call-out or API identification and management of associated obligations, risks, and privacy concerns

Register for the webinar.

Alphabet Inc.’s Google will have to fend off a patent infringement lawsuit in East Texas after a federal appeals court refused to reconsider moving the case to another court, reports Bloomberg Law.

A panel of the U.S. Court of Appeals for the Federal Circuit denied Google’s petition to rehear the issue of whether having servers in third-party facilities establishes a regular place of business for the purposes of filing a lawsuit, according to Bloomberg’s Malathi Nayak.

“SEVEN Networks LLC sued Google in for allegedly infringing patents related to data network traffic optimization through servers in East Texas,” Nayak writes. “Google said the case should be transferred because the presence of its servers in the district doesn’t amount to a regular and established place of business under the patent venue statute.”

Read the Bloomberg Law article.

With increasing attention on trade secrets and a developing body of case law around Defend Trade Secrets Act claims, an emphasis on contracts also is growing, point out Douglas R. Nemec and P. Anthony Sammi in a post for Skadden, Arps, Slate, Meagher & Flom.

“Breach-of-contract claims frequently have appeared alongside trade secret claims in lawsuits over the years and often materially impacted the results,” they write. “But a contract should not be viewed as a mere alternative to trade secret protection. Properly crafted, and if necessary properly litigated, a contract can both strengthen and expand the reach of a trade secret claim.”

Their article covers defining confidential information, term limitations and their risks, and maintaining confidentiality.

Read the article.

In most transactions involving the sale or license of intellectual property, a buyer or licensee will request that a seller or licensor represent and warrant that such intellectual property does not infringe or misappropriate the intellectual property rights of a third party.

In a post on the Morgan Lewis website, Rahul Kapoor and Shokoh H. Yaghoubi explain that this representation and warranty is often heavily negotiated in a license or purchase agreement. That’s because the seller or licensor wants to limit its obligations for breach of this representation to limit its liability under the agreement, whereas the buyer or licensee wants to keep this provision as broad as possible to ensure that it receives appropriate protection from third-party claims for the intellectual property it licenses or buys.

Their article offers some advice on structuring this type of contract clause.

Read the article.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Working Smarter with Patent Counsel: Tips for Inventors and In-House Lawyers, ” featuring Fitch Even attorney Jennifer V. Suarez.

The event will be Wednesday, January 23, 2019, at 9 am PST / 10 am MST / 11 am CST / 12 noon EST.

An efficient, productive first meeting with patent counsel can go a long way toward ensuring the patent application process goes smoothly and successfully. Inventors and corporate counsel alike can benefit from learning key considerations to discuss with their patent attorney initially and at each stage of the process.

This webinar will offer guidance on what crucial information should be provided at the onset and what further developments should be shared down the line:

• Pre-Drafting Stage
o Inventorship
o Information needed for written description
o Public disclosure (IDS; bar dates)
• Drafting Stage
o Legal requirements of a patent application
o Sections 112, 101, 102, and 103
o Specifications, claims, drawings
• Post-Filing Stage
o Post-filing improvements or prototypes
o Commercialization plans and efforts
• Business Drivers
o Target market analysis
o Marketing advantages of invention features
o Critical timeline markers

Register for the webinar.

Employees are the engine that drives a manufacturer’s innovations, but employees’ potentially patentable innovations only become the employer’s intellectual property if the proper patent assignment language is used, warns Foley & Lardner in its Manufacturing Industry Advisor blog.

Authors Christopher King and Richard Dancy explain:

“All employees that may develop potentially patentable innovations during the course of their employment should be required to sign contracts transferring ownership of all intellectual property rights to their employer. This may even include factory employees who submit ideas for product improvements through an employee suggestion program. However, if employee patent assignments are not carefully crafted, manufacturers may end up in a nightmare situation – believing they own a valuable patent invented by an employee when, in reality, it belongs to the employee.”

Read the article.

Image by NY Photographic

Squire Patton Boggs warns that a recent decision by the Fifth Circuit Court of Appeals in In re Provider Meds, L.L.C. is a stark reminder to chapter 7 trustees that they have an affirmative obligation to examine a debtor’s assets.

A trustee’s failure to conduct a sufficient and timely examination may deprive the estate of significant value, writes Mark Salzberg.

“The issue before the Court in Provider Meds was whether the assumption and assignment of an intellectual property license agreement . . . conveyed any intellectual property rights since the Agreement had not been timely assumed by the trustee,” Salzberg explains.

Read the article.

NBC News reports that the Justice Department revealed Thursday that a federal grand jury has charged companies in China and Taiwan  and three individual Taiwanese nationals with a scheme to steal trade secrets from Micron.

China is “shamelessly bent on stealing its way up the ladder of economic development and doing so at American expense,” said John Demers, assistant attorney general for national security.

NBC reporter Pete Williams writes: “Federal prosecutors said one of the defendants served as president of a company acquired by Micron five years ago. The charges said he went to work for the Taiwan company, United Microelectronics Corporation, and orchestrated the theft of trade secrets from Micron worth nearly $9 billion.”

Read the NBC News article.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “FRAND Licensing: Recent International Developments,” featuring Fitch Even senior licensing specialist and patent analyst Curtis S. Dodd.

The event will be Thursday, Nov. 15, 2018, at 9 am PST / 10 am MST / 11 am CST / 12 noon EST.

Understanding the latest developments in FRAND licensing is essential to developing appropriate strategies for licensing standard essential patents (SEPs), both as licensor and licensee.

During this webinar, presenters will provide an overview of recent developments in FRAND licensing as a process and as a result, including a discussion of the following:
• Guidelines published in Europe, China, and Japan for licensing of SEPs
• Key decisions from the U.S., the UK, and China regarding how to determine FRAND terms and conditions, including
o Unwired Planet v. Huawei (UK)
o TCL v. Ericsson (US)
o Huawei v. Samsung (CN)

In addition, the event will address these topics:
• Who holds the FRAND burden of proof
• What it means to be a willing licensee
• Jurisdiction for deciding FRAND disputes
• The appropriateness of confidentiality agreements

Register foor the webinar.

Photo by Kārlis Dambrāns

A former employee of Huawei Technologies Co. accuses the company of using a lawsuit against his Silicon Valley startup as part of a strategy to steal intellectual property and help China achieve technological dominance over the U.S. according to a report in The Dallas Morning News.

“Huawei and its FutureWei unit sued Huang and his startup CNEX Labs Inc. last December, accusing Huang of making off with sensitive trade secrets related to technology that uses integrated circuits as memory to store data,” the article reports. “Huang was hired as an engineer by FutureWei in Santa Clara, California, in January 2011 and left two years later to form CNEX, where he’s chief technology officer.”

But Huang responded that he was the victim of the Chinese company trying to take control of his inventions for Solid State Disk Non-Volatile Memory. Huang’s defense raised the corporate espionage allegations filed by other American companies and a congressional report that said use of Huawei equipment “could undermine core U.S. national-security interests.”

Read the Dallas News article.

The ABA Journal reports that a Florida attorney is suing San Antonio lawyer Heather Clement Tessmer for using “Ever Argue With A Woman?” on billboards, the internet and business cards to pitch her legal services.

Florida lawyer Melissa Wilson claims in a federal lawsuit that Tessmer and her Tessmer Law Firm are infringing her trademark by using a confusingly similar slogan.

Journal reporter Debra Cassens Weiss explains: “Wilson says she has been using the slogan since at least September 2007, and she sent an email telling Tessmer to stop after she learned of the infringement from confused consumers around April 2014. Her lawyers also tried to contact Tessmer, but Tessmer never responded, the suit says.”

Read the ABA Journal article.

A dispute over the songwriting credit for the iconic “Stairway to Heaven” took a surprising twist last week when a California appellate court reversed a 2016 copyright victory for Led Zeppelin and ordered a new trial, according to a post on the website of Androvett Legal Media & Marketing. The Ninth Circuit ruling means that the estate of Randy Wolfe (aka Randy California) has a second chance to convince a jury that one of classic rock’s most recognizable guitar riffs was based on work by the largely forgotten 1960s-era performer.

In 2016, a Los Angeles jury took just 15 minutes to find that “Stairway to Heaven” was not substantially similar to “Taurus” written by Wolfe’s band Spirit. The Ninth Circuit judges found that the trial judge had failed to advise jurors that while individual elements of a song may not qualify for copyright protection, a combination of sufficiently original elements may qualify.

Copyright lawyer Amanda Greenspon of Dallas-based Munck Wilson Mandala said there’s no clear legal criteria to use in determining what a “combination of sufficiently original elements” is and courts have reached inconsistent conclusions. She said last week’s decision appears to reflect the sentiment behind the 2015 ruling awarding the estate of Marvin Gaye more than $7 million after a jury found that Robin Thicke and Pharrell Williams had copied portions of Gaye’s “Gotta Give it Up” in their 2013 hit “Blurred Lines.”

“That case has been criticized for allowing the copyright holder to protect a style as opposed to an actual composition,” she said. “That’s not the express precedent from the case which had a number of procedural issues, but it definitely resonates in the decision to remand it back to the trial court and essentially provide jury instructions that certain common elements can be protected under copyright even when they may be standard to a genre.”

Greenspon notes that copyright law offers protections against claims of infringement for certain works in books, plays and films that are common to a genre. “There is no analogous doctrine in music, but we see the same concept play out all the time,” she said. “Songs within a genre of music often share common elements. How musicians handle that is often based on the two songs’ relative commercial success. In some instances, it’s easier to acknowledge credit and not litigate.”

Morgan Lewis discusses a frequent point of contention between parties negotiating the allocation of risk related to intellectual property rights in connection with the acquisition of intellectual property: the interplay between the warranty and indemnification sections.

In the post, authors Emily R. Lowe and Susan Milyavsky break down what to look for in these sections and how minor changes in the language can significantly change the rights a party is granting or receiving.

The post is part of the firm’s Contract Corner series in the Tech & Sourcing blog.

Read the article.

Bruce “Chip” Morris of Kane Russell Coleman Logan has posted a new podcast in the firm’s Energy Law Today blog about the top 10 mistakes employers can make—in the oilfield, and beyond—when drafting non-compete agreements.

Morris, a director in the firm’s Houston office, is the head of the firm’s Intellectual Property Group.

The 10 mistakes involve such areas as overbroad restrictions, choice of forum clauses, agreements that aren’t appropriate for all employees, and agreements that haven’t kept up with technology.

Listen to the podcast.

An employee invention assignment agreement is a crucial tool for protecting intellectual property, but the laws governing them contain traps for the unwary, warns Jeffrey A. Simmons in Foley & Lardner’s Labor & Employment Law Perspectives.

“If the agreement is too narrow or ambiguous, it may allow inventions to slip away. Further, if the agreement fails to include certain provisions, it may be invalid in certain states,” he explains.

Patentable inventions and copyrightable works are the most significant forms of employee-created intellectual property, but the default rules for those creations are polar opposites, Simmons writes.

Read the article.