This week, in an en banc decision, the Federal Circuit Court of Appeals significantly altered the law of willful patent infringement and resolved a confusing issue concerning the waiver of the attorney-client privilege. In In re Seagate Technology, LLC (August 20, 2007), the court made it harder for a patent owner to prove willful infringement. The court also clarified that the waiver of the attorney-client privilege between the client and patent opinion counsel does not result in a waiver of the privilege and the work product protection between the client and its litigation counsel. Continue Reading Patent Infringement Willfulness Redefined and Work Product Preserved
Revisiting Brulotte and Royalty Agreements for Patented Inventions
On September 5, 2007, the Ninth Circuit issued its opinion in Zila, Inc. v. Tinnell, in which it considered the issue of a contract for payment of royalties on a patented invention in light of the 1964 U.S. Supreme Court Case, Brulotte v. Thys. In what the Court considered to be an “otherwise unremarkable case,” the Ninth Circuit found it necessary to consider “the impact and bounds of Brulotte” in determining whether Tinnell was entitled to royalty payments on a patented invention he had assigned to Zila, Inc.
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Ninth Circuit Holds Modified Terms of Use Unenforceable Where User Not Properly Notified of the Changes
By Scott Hervey
It’s not uncommon for companies to change or modify the terms under which they provide services to consumers. This is true whether the company is a traditional brick and mortar company or Internet based. When traditional companies make a change to service terms they usually send some type of written notice to the consumer. But for some reason this never caught on for Internet based companies. Often the Internet based Company would merely make changes to its terms of use (the contract which governs the consumers’ use of the relevant website and its services) and post the revised terms of use on its website. In most instances, unless the user reviewed the terms of use frequently and compared the current version to the version that was posted at the time the consumer became a user of the site, the user would be unaware of any changes.
“Making Available” is Copyright Infringement in File Sharing Case
By Jeff Pietsch
Last week, a judge for the United States District Court in Arizona has granted a summary judgment in favor of recording companies. The judgment finds the defendant, Jeffrey Howell, liable for copyright infringement for illegally sharing music files. Even though there was no evidence that the defendant actually distributed the music files, the judge found the defendant violated copyright laws by making the files available for distribution. This case is significant because it is the first case that specifically states that “making available” equates to distribution under copyright laws.
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Experts and Summary Judgment
Intellectual property litigation relies heavily upon the use of expert testimony. The Ninth Circuit Court of Appeals recently analyzed the intersection of Federal Rules of Evidence, Rule 702 and the ruling in Daubert v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) (“Daubert”) concerning the admissibility of expert testimony and Federal Rules of Civil Procedure, Rule 56 for summary judgment. Stillwell v. Smith & Nephew, Inc., 482 F.3d 1187 (9th Cir. 2007). Admissibility of expert testimony must be carefully evaluated for reliability and helpfulness, but that is different than the analysis for whether a triable issue of fact is established.