The China Law Blog has published part one of an expected series of posts setting out exactly what foreign companies should do (and not do) to protect their intellectual property in China.

The author, Dan Harris of Harris Bricken, tells the story of a prospective client who sought help because a Chinese manufacturer he was working with on a product started selling a new product that happened to have the same features and functions as the product the American developer had submitted to the manufacturer.

Harris’ firm told the prospective client not much could be done because the nondisclosure agreement with the manufacturer was worthless in China. And U.S. patents won’t provide much practical protection, either.

The firm’s lawyers explained that the developer would have been better off if he had an NNN agreement —non-use, non-disclosure, and non-circumvention — that would be enforceable in a Chinese court with jurisdiction over the Chinese defendant. .

Read the article.

A U.S. appeals court ruled Thursday that judges on a patent review panel were unconstitutionally appointed, casting a cloud over some of its work, according to a Bloomberg report.

The court ordered a new hearing before different judges at the U.S. Patent and Trademark Office’s review board in a dispute over a surgical device. The court suggested other pending patent challenges may suffer the same fate, report Bloomberg’s Susan Decker and Greg Stohr.

“The Court of Appeals for the Federal Circuit said that, under a 2011 law that created the reviews before the panel, called the Patent Trial and Appeal Board, judges had so much authority they should have been appointed by the president and confirmed by the Senate.”

Read the Bloomberg article.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Alphabet Soup: A Review and Summary of Post-Grant Practice at the USPTO,” featuring Fitch Even partner David A. Gosse.

The event will be on Thursday, November 21, 2019, 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.

After a U.S. patent issues, many procedures are available to correct the patent, challenge its validity, and even change its scope. These include a bewildering array of procedures sprinkled with Latin phrases and confusing acronyms. The America Invents Act, passed in 2011, changed the face of post-grant practice at the U.S. Patent and Trademark Office. As the procedures presented in that bill have matured, keeping up with ever-evolving policies and practices has been a challenge even for highly engaged practitioners. This webinar will provide a summary of post-grant procedures and an introduction to when, why, and how each procedure is useful (or not) to patent owners and third parties.

During the webinar, the presenter will cover these topics and more:
• Review of post-grant procedures at the USPTO including inter partes review (IPR), post-grant review (PGR), covered business method review (CBM), supplemental examination, ex parte reexamination, and reissue applications
• Strategic purposes of the various post-grant procedures
• Tactics for petitioners and patent owners in USPTO trial proceedings

Register for the webinar.

In order to preserve the right to seek punitive damages and attorney fees from an employee or former employee who has misappropriated trade secrets, the employer must have provided notice of the whistleblower-protection provisions of the Defend Trade Secrets Act.

“Notice of the whistle-blower protection provisions must be included ‘in any contract or agreement with an employee that governs the use of a trade secret or other confidential information,’” explains author Anthony George in the article on the website of Bryan Cave Leighton Paisner.

He advises employers to include the DTSA whistleblower-protection provision, or to amend existing contracts if necessary.

Read the article.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Effective Trade Secret Practices: What You and Your Employees Need to Know,” featuring Fitch Even attorneys Thomas F. Lebens and Donald “Bob” Bunton.

The event will be on Thursday, Sept. 26, 2019, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT. It will also be available as an on-demand webinar after the presentation.

With the passage of the America Invents Act and the Defend Trade Secrets Act, as well as recent case law creating uncertainty in some areas of patent law, many intellectual property owners have expressed a renewed interest in trade secret protection for innovations and information. However, very few of these IP owners have a well-developed program for identifying, classifying, and intentionally protecting these trade secrets. And even for those owners with such a program, establishing a record of training leaders and employees in trade secret protection can be important to show that the owner has engaged in “reasonable efforts” to protect its trade secrets.

During this webinar, our presenters will discuss the following:
• Best practices for identifying and classifying trade secrets
• Key features of a trade secret program
• Internal ongoing education on trade secret protection needed to support a showing of “reasonable efforts”

Register for the webinar.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “How Late Is Too Late? Setting the Timeline for Patent Protection,” featuring Fitch Even attorneys Mark A. Borsos and Vincent R. Meyer.

The event will be on Thursday, August 29, 2019, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT. It will also be available as an on-demand webinar after the presentation.

Patent considerations do not always align with commercial realities. Although pursuing patent protection as early as possible is generally preferred, at times product development, financial issues, and other factors get in the way. In some circumstances, inventors do not even think about patenting an invention until they are sure that their idea is practical and there is sufficient commercial interest to warrant investing the necessary time and resources into reducing the invention to practice. This webinar will explore considerations affecting the timing of patent filings and what to do if an inventor’s prior actions have potentially put their patent rights in jeopardy.

During this webinar, presenters will discuss the following:

• Supreme Court and Federal Circuit decisions regarding statutory bars
• When an invention is “ready for patenting”
• Potential scenarios that could endanger patent rights
• Factors that may weigh for and against patentability once an invention has been disclosed or offered for sale
• Strategies for coordinating patent filings with development efforts

Register for the webinar.

Perkins Coie announced the launch of the Northern District of California Patent Law Blog (N.D.Pa.L. Blog), which will address substantive and procedural developments specific to the U.S. District Court for the Northern District of California related to patent law.

Written by a team of patent litigators with experience in the Northern District of California, the blog provides on-the-ground insights on significant hearings and rulings that are key for attorneys practicing in the district. The blog also aims to familiarize readers with the judges and magistrates of Silicon Valley.

The primary authors of N.D.Pa.L. are Jim Valentine, Dan Shvodian, Chris Kelley, Victoria Smith, Wing Liang, Nancy Cheng, Sarah Stahnke, Crystal Canterbury, Andrew Klein, John E. Munter, Amisha Manek, and Adam Hester.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Ensuring Copyright Protection in a Changing Legal Landscape,” featuring Fitch Even attorneys Alisa C. Simmons and Kerianne A. Strachan.

The event will be on Thursday, May 2, 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.

The recent Supreme Court decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, established that a copyright owner may not file an infringement suit until the U.S. Copyright Office has acted on the copyright owner’s application to register its copyright in the work. Moving quickly to register copyrights is now an important step in safeguarding your rights.

During this webinar, presenters will share insights on the following:
• The practical effects of the Fourth Estate Public Benefit Corp. v. Wall-Street.com decision and other benefits of early registration
• Strategies for protecting copyright rights in work product produced by employees
• Strategies for obtaining and maintaining necessary permissions to use third-party materials in advertisements and promotions
• Recent updates enacted by Congress to benefit music publishers through the Music Modernization Act

Register for the webinar.

Apple and Qualcomm have dueled on three continents over the division of billions of dollars of smartphone profits and even how much consumers pay for their phones but as a trial on the issue began Tuesday, the two companies said they had essentially made up.

The San Francisco Chronicle reports:

The companies, one the maker of iPhones and the other one of the largest providers of mobile chips, said they had agreed to dismiss all litigation between them worldwide. They added that they had reached a six-year agreement for Cupertino’s Apple to pay royalties on Qualcomm’s patents, which was effective as of April 1.

Read the SF Chronicle 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.

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, “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.

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.”

The IP for AI Summit, scheduled for Nov. 13-15, 2018, in Washington, DC, aims to uncover the latest secrets and explore best practices to harness and deploy valuable Artificial Intelligence IP assets successfully and effectively.

Organizers are now accepting speaker proposals for the forum. Anyone with a unique story may submit the title of the proposed talk with a brief description of the session objectives at tiffany@strategicsolutionsnet.com.

The 2018 Forum features the following Key Themes:

-What are the Most Vital Elements to Building a Strong Artificial Intelligence IP Portfolio?

-How to Facilitate and Implement AI Innovation within your Organization

-Can’t We All Just Get Along? Bridging the Gap Between your Inventors and IP Team

-Patent Eligibility According to the Experts Post-ALICE

-Building the most effective defense for your Portfolio

-De-mystifying Valuable Tactics to Monetize your IP Portfolio

-Successful Methods to Utilize Trade Secrets as a Protection Mechanism to your Portfolio

-How to Perfectly Execute an Effective and Lucrative In-Licensing Acquisition

-Inventorship vs. Ownership: Is a Machine Considered an Owner?

-Best practices explained to pass your patent under first-to-file AIA law changes

-What are the Best Practices to managing Partnerships, In-licensing of AI Expertise and Maximizing your Acquisition Potential

-How to Advance your Career utilizing AI Innovations in the Legal Industry

The event attracts a cross-section of innovators, business leaders and in-house counsel, according to organizers.

Register for the event or get details.

Morgan, Lewis & Bockius lawyers, writing in the firm’s Tech & Sourcing blog, discuss the typical ways that parties can use contracts to determine intellectual property ownership.

“In the context of negotiating an agreement where intellectual property rights are addressed, most parties will readily agree that those intellectual property rights owned by a party before the effective date of the agreement or developed outside of the agreement (commonly referred to as background rights) should be owned by that party,” write Vito Petretti and Cindy L. Dole.

Their article discusses the common allocations of foreground IP rights.

Read the article.

Morgan Lewis authors, writing in the firm’s Tech & Sourcing blog, discuss how patent, copyright, and trade secret ownership works in the United States if there is no agreement in place to allocate these rights.