By Audrey A. Millemann

Enablement is one of the requirements a patent application must satisfy in order for the patent to be granted. Enablement means that the specification (the written text and drawings) teaches a person skilled in the art how to make and use the invention. 35 U.S.C. §112, ¶1. The enablement requirement is satisfied if a person, after reading the specification, could make and use the invention without undue experimentation. 

In Cephalon, Inc. v. Watson Pharmaceuticals, Inc., 707 F.3d 1330, 2013 U.S.App. LEXIS 3203 (Fed. Cir., February 14, 2013), the Federal Circuit Court of Appeals held that experimentation is not “undue” even if it is “complicated and difficult.” 

Cephalon owned two patents covering a method of drug delivery, which used effervescent agents to increase the absorption of the drug. Cephalon sold the brand-name drug Fentora to treat breakthrough cancer pain, which utilized the patented method.

Continue Reading Patent Enablement: Undue Experimentation Does Not Mean No Experimentation

By Nathan H. Geronimo

A recent case in California’s Sixth District Court of Appeal, Winchester Mystery House, LLC v. Global Asylum, Inc., illustrates California’s treatment of trademark infringement with regard to claims involving artistic works.  Winchester Mystery House is a well-known tourist attraction in San Jose, California.  It is a large, Victorian-style mansion built and expanded by Sarah Winchester, the wife of William Winchester of Winchester Repeating Arms Co. fame.  Legend has it that after her husband’s death in 1881, Sarah Winchester became convinced that she and her family were haunted by the ghosts of those who fell to Winchester rifles.  To combat the haunting, Sarah Winchester bought a farmhouse in San Jose and began the unrelenting task of adding rooms and peculiar features to the house, such as stairways that lead to ceilings in an effort to confuse and thwart the ghosts.  Construction at the Winchester mansion continued constantly for 38 years until Sarah’s death in 1922.  By this time the mansion had swelled to 160 rooms.

The mansion was later bought and established as a museum, and is now controlled by Winchester Mystery House LLC (“Winchester”), which owns the “Winchester Mystery House” trademark and an architectural mark comprised of the three dimensional shape of the Winchester mansion.  In 2008, Winchester granted Imagination Design Works the exclusive right to film at the Winchester Mystery House as well as the rights to use Winchester’s marks and copyrights in association with a film about the house.  Defendant Global Asylum (“Global”) thereafter asked Winchester for permission to film at the mansion, at which time Winchester informed Global of its deal with Imagine Design Works.  Nonetheless, Global produced and distributed a film called, “Haunting of Winchester House.”  The film claims to be a true story about a family that moves into the 160 room mansion to act as caretakers and is haunted by Sarah Winchester and other ghosts.  Winchester sued Global for trademark infringement, alleging that Global’s use of the term “Winchester House” and images of a Victorian-style mansion exploited Winchester’s marks and lead the public to believe that the film was sponsored or otherwise sanctioned by Winchester. 

Continue Reading What’s In a Name? Trademark Infringement and Artistic Expression

By Anji Mandavia

The big news in copyright jurisprudence is, of course, last week’s landmark ruling in Kirtsaeng v. John Wiley & Sons, in which the Supreme Court, in a 6-3 decision, definitively ruled that the “first sale” doctrine — which allows the owner of a copyrighted good to sell or dispose of that particular item without the permission of the copyright proprietor — applies to all goods legitimately manufactured with the permission of the copyright owner, whether made in the United States or abroad. 

By this decision, the Supreme Court resolved a split in the Circuits: The Third Circuit had adopted a similar position, that the first sale doctrine applies to lawful foreign-made copyrighted works; the Second Circuit had adopted the contrary position, that the first sale doctrine applies only to copyrighted goods made in the United States, and does not apply to foreign-made goods even if they were lawfully made; and the Ninth Circuit had adopted a hybrid position, that the first sale doctrine applies to lawful foreign-made goods if they have first been imported into or sold in the United States with the permission of the copyright proprietor.

While the Court’s decision will have broad ramifications across a number of business sectors regarding the foreign manufacture, sale, and potential importation of copyrighted goods (over 20 amicus briefs were filed, most on behalf of multiple parties and business organizations), the majority opinion itself had a very narrow, semantic focus — namely, what do the words “lawfully made under this title,” as used in section 109(a) of the Copyright Act, mean.

Continue Reading The Supreme Court Clarifies the Application of the “First Sale” Doctrine to Copyrighted Works Manufactured Abroad

Join us March 26!

Weintraub Tobin and the LAVA Digital Media Group will host a panel discussion: "The Role of Digital Media in Influencing Public Perception and Behavior" on Tuesday, March 26.

Digital Media plays a significant role in creating and defining cultural norms and influencing individual behavior. Join our panel of experts in a discussion about how digital media shapes public perception, influences individual beliefs and triggers events in the physical world.

This evening event is designed to bring together entrepreneurs, start-ups, accelerators, venture capitalists, and businessmen and women alike to discuss the role of digital media and the way it shapes our culture. Enjoy a social hour from 6:30-7 p.m. followed by the panel discussion and a Q&A session.

Panelists include:

  •     Anton Vuljaj, Analytical Lead, Google Elections and Issue Advocacy
  •     Joe Mathews, California editor, Zocalo Public Square (zocalopublicsquare.org) fellow
  •     Joel Fox, Editor-In-Chief of FoxAndHoundsDaily.com
  •     Bryan Merica, founder and president of ID Media
  •     Gary Brown, President of Political Data (politicaldata.com)
  •     Moderated by Scott Hervey, Shareholder, Weintraub Tobin

"The Role of Digital Media in Influencing Public Perception and Behavior" takes place Tuesday, March 26th at ROC, 604 Arizona Street in Santa Monica. Register here.

Follow the event on Twitter: @weintraub_law
#wtdmg

On February 27, 2013, Congress proposed the “Saving High Tech Innovators from Egregious Legal Disputes (SHIELD) Act.” This bill is designed to stem the tide of patent litigation initiated by non-practicing entities, also known as “patent trolls.” A non-practicing entity (“NPE”) generally operates by forming a shell corporation to acquire and hold patents, then litigating against anyone who uses the covered technology without a license. The NPE’s goal is to monetize its patent portfolio through license revenues obtained in connection with patent infringement settlement agreements. According to President Obama, the NPE business model is designed to “leverage and hijack somebody else’s idea and see if [the NPEs] can extort some money out of them.”

Business is booming. Numerous NPEs have come into existence in recent years, initiating hundreds of patent infringement lawsuits. Estimates from 2011 show that NPEs received as much as $29 billion from U.S. companies. At the heart of the NPE business model is the stark reality that defending a patent infringement lawsuit costs hundreds of thousands, and often millions of dollars. Some patent trolls therefore assert dubious claims against accused infringers knowing that most defendants will settle by executing a patent license rather than risk the costs and uncertainty of patent litigation. The SHIELD Act is designed to address this issue by shifting risk back to the NPEs. Its authors hope that shifting enough risk to NPEs who instigate frivolous patent infringement lawsuits will discourage and reduce such meritless lawsuits.

Continue Reading The SHIELD Act – Death of the Patent Troll, or Incentive to Infringe?