One of the most common forms of relief sought in trade secret litigation is an injunction preventing the defendants from using or disclosing the plaintiff’s trade secret information. Although temporary restraining orders and/or preliminary injunctions may be obtained that are in place during the lawsuit, a permanent injunction is entered after trial and typically has no set time period for expiration. There are various statutes that allow a defendant to seek to modify or dissolve a trade secret injunction at a later date, including a showing that the information that is the subject of the injunction is no longer entitled to trade secret protection. The recent decision in Global Protein Products, Inc. v. Le (Cal. 6th App. Dist.) helps illustrate the high hurdle a defendant must clear in order to obtain such relief. Continue Reading
Patent Priority Dates Must Be a Priority!
Posted in IP, Patent LawThe priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on; it is based on the filing dates of any related patent applications that were filed before the application (the priority chain). This date determines which prior art can be used by the Patent and Trademark Office to determine patentability of the invention and which prior art can be used by competitors to challenge the patent’s validity. Continue Reading
Online Gaming Case Addresses Trigger for One-Year IPR Filing Deadline
Posted in IP, Patent LawWhen sued for patent infringement, a defendant can still petition for inter partes review (“IPR”) of the asserted patent at the United States Patent and Trademark Office (“USPTO”) if the petition is filed within one year of service of the complaint. But, as Game & Technology Co. v. Wargaming (Fed. Cir. 2019) reminds us, a plaintiff must properly serve the complaint to trigger the one-year deadline. Specifically, “[s[ection 315(b) states that ‘[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.’” 35 U.S.C. § 315(b). Continue Reading
OK, BOOMER: Fox Media Seeks Registration of the Viral Phrase From the USPTO
Posted in IP, Trademark LawIf you’re plugged into the digital world and its constantly emerging meme trends, you’ve probably encountered various “OK, Boomer” memes by now. If you’re unfamiliar with the trend, here is a brief synopsis. OK, Boomer is a phrase that is used in response to members of the baby-boomer generation who have, through their conduct, demonstrated that they are out of touch. For example, when a member of the baby-boomer generation harps on a member of the millennial generation or Generation Z for allegedly lacking the work ethic of the boomer generation, one might respond, “OK, Boomer.” There are various other situations where the phrase could be used, but as you can see, it is either a trendy insult, or an ageist slur, depending on your point of view. Continue Reading
Order in Netflix Lawsuit is a Reminder of the Bounds of Copyright Protection
Posted in Copyright Law, Entertainment Law, IPVirginia Vallejo, a well known Colombian journalist and media personality, authored the memoir “Loving Pablo, Hating Escobar”. The book is a factual account of her romantic relationship with Pablo Escobar and a chronicle of the rise of the Colombian drug cartel.
Vallejo claimed that certain scenes in the television series Narcos infringed the copyright in her book, and she sued Narcos Productions, the producer of the series, Gaumont Television, the series’ distributor, and Netflix, the U.S. broadcaster. Specifically, Vallejo claimed that certain scenes in the series were copied from various chapters in her book, including one that describes a sexual encounter between Vallejo and Escobar involving a handgun, and Continue Reading
Federal Circuit Holds Administrative Patent Judges Appointments Unconstitutional
Posted in IP, Patent LawIn Arthrex Inc. v. Smith & Nephew Inc. et al., case number 18-2140, the U.S. Court of Appeals for the Federal Circuit recently considered whether the appointment of the Board’s Administrative Patent Judges (“APJs”) by the Secretary of Commerce, as currently set forth in Title 35, violates the Appointments Clause of the U.S. Constitution. The Federal Circuit held that the statute as currently constructed makes the APJs principal officers. To remedy the violation, the Federal Circuit concluded that severing the portion of the Patent Act restricting removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem. As the final written decision on appeal issued while there was an Appointments Clause violation, the appropriate course of action was for this case to be remanded to a new panel of APJs. Continue Reading
What Happens When the Intellectual Property Laws Clash with the Antitrust Laws?
Posted in Copyright Law, IP, Patent Law, Trademark LawShould a company be required to license its patents to a competitor? That’s one question that arises when intellectual property law and antitrust law intersect.
The Sherman Act, section 1, prohibits concerted action (agreements, combinations, or conspiracies) that restrain trade. Four types of conduct are per se unlawful; i.e., illegal regardless of the reason. They all involve agreements between competitors, also called horizontal agreements. It is per se unlawful to agree with a competitor to fix prices, rig bids, participate in group boycotts, or allocate markets. Other types of conduct are unlawful under the Rule of Reason; their illegality depends on the conduct in the relevant market (the product market and the geographic market) and whether there is a rational business reason for the conduct. Examples of unlawful conduct include certain types of exclusive dealing arrangements, some kinds of price discrimination or restrictions on sales, tying arrangements, and some mergers and acquisitions. Continue Reading
When Does A Patent Expire? Ask the Federal Circuit!
Posted in IP, Patent LawBefore 1995, the term of a U.S. utility patent was 17 years from the day the patent issued. In 1994, the federal statutes were changed to make the patent term 20 years from the effective filing date of the patent application. This change was part of the Uruguay Round Agreements Act and was intended to make U.S. patents comparable to foreign patents, which, in most countries, expire 20 years from their filing dates.
However, in order to address the problem of delays caused by the Patent and Trademark Office during the prosecution of a patent, Congress enacted statutes providing for the addition of specific numbers of days to a patent’s term. See 35 U.S.C. section 154(b). Continue Reading
PTAB Invalidates Data Privacy Risk Assessment Patent
Posted in IP, Patent Law, PrivacyMany resources are being devoted to preventing data breaches and protecting privacy. In fact, patents have issued on various approaches. But are those approaches really patentable? In a recent challenge to OneTrust’s patent, which is related to data privacy risk, the Patent Trial and Appeal Board (“PTAB”) found the subject matter patent ineligible.
OneTrust’s patent, U.S. Patent No. 9,691,090 (“’090 Patent”), relates to privacy management software that calculates the risk to personal data that has been collected and is being used, for example, by a business. OneTrust explained its software platform is used by companies to comply with data privacy regulations. Continue Reading
Counterculturalist Banksy to Defend His Intellectual Property in a European Cancellation Proceeding
Posted in Copyright Law, IP, Trademark LawIf you’re familiar with Banksy, you know he’s the epitome of counterculturalism. For those of you who aren’t familiar with Banksy, he is an anonymous England-based street artist, vandal, political activist, and film director who has been active since the 1990s. His satirical street art and subversive epigrams combine graffiti and dark, sometimes morbid, humor. If you have a minute, take a look at his work. He certainly isn’t someone who you would expect to turn to the legal system to protect his intellectual property. In fact, he’s openly stated that “copyright is for losers.” Continue Reading
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