The validity of a United States patent can be challenged in federal court litigation.  Patents can also be challenged in the U.S. Patent and Trademark Office, which, in most cases, is a quicker and less costly process.

The PTO provides three procedures by which a patent can be challenged: inter partes review (IPR), post grant review (PGR), and ex parte reexamination.  In IPRs and PGRs, the challenger and the patent owner both participate, and the proceedings are handled by the Patent Trial and Appeal Board (PTAB).  In an ex parte reexamination, the challenger is not involved after the request for reexamination has been filed, and the proceeding is handled by the PTO examiners.

In IPRs and PGRs, anyone except the patent owner may file a petition to challenge the patent.  The filing fees are high, $41,500 for an IPR and $47,500 for a PGR, with additional fees depending on the number of claims challenged.  The proceedings are handled by a three-judge panel of administrative judges with technical background in the field of the patent.  There are two phases in these proceedings.  The first phase consists of the filing of the petition by the challenger, the filing of a response by the patent owner, and the decision whether to institute the IPR or PGR by the PTAB.  If the PTAB institutes the IPR or PGR, then the second phase (the trial phase) begins.  The second phase consists of discovery (more limited than in litigation), briefing, an oral hearing, and a final written decision by the panel.  The entire process from institution to the final decision should take no more than 12 months.  The parties may appeal the decision to the Federal Circuit Court of Appeals. Continue Reading How to Challenge a Patent in the PTO

On March 16, 2021, U.S. Circuit Judge Evan J. Wallach for the Federal Circuit Court of Appeals announced he plans to take senior status on May 31, 2021.  This semi-retirement is set to create the first vacancy at the Federal Circuit in almost six years.  The Federal Circuit handles all appeals of patent cases from Districts Courts in the U.S., and appeals from various government agencies.  Thus, the Federal Circuit is the only one of the thirteen federal courts of appeal whose jurisdiction is determined entirely on the subject of the lawsuit it hears, rather than on the geographical location from which the appeal originated.  This means the Federal Circuit can hear appeals from every District Court in the United States as long as it has subject matter jurisdiction. The only court in the United States with more authority over patent related issues in the United States Supreme Court.

The Federal Circuit was the only federal court of appeals that did not have any vacancies during President Donald Trump’s administration.  In fact, President Trump nominated and succeeded in putting a judge in every other appellate court during his four years in office, including fifty-four judges on the federal appeals bench.  However, the Federal Circuit remained untouched, and in fact currently has eight Democratic-President appointed judges, and four Republican-President appointed Judges. Continue Reading Federal Circuit Set to Have First Vacancy in Six Years

We recently discussed a new trend in celebrity copyright litigation on our YouTube channel and podcast (The Briefing on YouTube). Specifically, we discussed celebrities taking a stand and defending copyright claims brought by photographers against celebrities who reposted photos on their social media accounts. Two specific celebs who have taken a stand are Emily Ratajkowski and LeBron James. I am writing today to discuss what may be a new strategy in such copyright litigation. That strategy is defaulting.

When a party is sued in federal court—the exclusive jurisdiction for copyright actions—they have 21 days from the date of service to file a responsive pleading under Federal Rule of Civil Procedure 12(a)(1)(B). If a defendant fails to file a response, the plaintiff can apply to the court for entry of default under Federal Rule of Civil Procedure 55(a). Unless the defendant files an untimely response, the court will likely enter the defendant’s default. Once that occurs, the defendant is deemed to have admitted the well-pleaded allegations of the complaint. The plaintiff can then apply to the court for entry of default judgment. In doing so, the plaintiff requests that the default judgment include all damages that the plaintiff claims to have incurred, attorney’s fees (if applicable), and costs. Of course, the plaintiff has to provide factual and legal support for the damages request. Obviously this isn’t an ideal situation for a defendant given that the plaintiff gets to provide uncontested evidence to the court to support its damages claim while the defendant is deemed liable due to the entry of default. If you ask most attorneys, they would tell you that defaulting is never advisable, unless perhaps you’re judgment proof. But a recent ruling from the United States District Court for the Southern District of New York may cause some attorneys to rethink things.

In the matter of Clint Brewer v. Sofia Vergara Enterprises, Inc. and Sofia Vergara (collectively, “Vergara”) (Docket No. 1:20-cv-4865-AKH), a photographer who licensed a photo that he took of Vergara walking onto the set of America’s Got Talent sued Vergara for copyright infringement after she reposted the photograph on her Instagram account to her 21.2 million followers. Brewer hired the infamous copyright troll Richard Liebowitz, who has been repeatedly sanctioned by the federal courts for filing frivolous litigation and who was recently suspended from practicing law in New York, pending a disciplinary investigation. In short, Brewer claimed that Vergara published his copyright-protected photograph to promote her clothing brand—which she arguably did since she tagged Wal Mart and mentioned her clothing line in the caption. Brewer’s prayer for relief included a claim for $150,000 in statutory damages under the Copyright Act and additional damages under the Digital Millennium Copyright Act for removing the copyright notice. Despite a significant request for damages, Vergara never responded to the complaint. It’s unclear whether this was intentional, but presumably it was given Vergara’s familiarity with litigation.

As a result of Vergara’s failure to respond, the Court entered her default, and Brewer subsequently moved the court for a default judgment. Although Brewer alleged that he was seeking up to $150,000 in statutory damages, his motion only sought $5,000 in statutory damages, $455 in attorney’s fees, and $440 in costs. In determining statutory damages, the court has great discretion to award between $750 and $150,000 per work, depending on whether the infringement was willful.

On February 18, 2021, the court issued its order and entered default judgment. The court exercised its discretion and awarded a mere $750 in statutory damages for the copyright infringement claim and refused to award attorney’s fees and costs. Given the amount in controversy for a violation of the Copyright Act, this is a great outcome, and it’s exponentially better when you consider that Vergara didn’t spend a dime in attorney’s fees or costs, which easily could have exceeded six figures if the matter were contested.

While this was a fantastic outcome for Vergara, I can’t say that I’ll be inclined to suggest to my clients that they simply default in such cases. The risk of doing so is far too great. Sure, the court in the Vergara case found that her conduct wasn’t willful, awarded the statutory minimum in damages, and refused to award attorney’s fees and costs. But it was also possible that a judge could have deemed her conduct willful and awarded the statutory maximum of $150,000 and attorney’s fees and costs. In this instance, the gamble paid off, and I will unquestionably inform my clients of this outcome, but I will not be the one to recommend the default strategy. If a client chooses to roll the dice after being provided with a thorough explanation of the possible outcomes, that is their prerogative. But flatly recommending such a course of action seems imprudent.

In this episode of The Briefing by the IP Law Blog, Weintraub  attorneys Scott Hervey and Josh Escovedo discuss Josh’s article for the IP Law Blog, “Dogs, Whiskey, and Intellectual Property: Need I Say More?” 

Continue Reading The Briefing by the IP Law Blog: Dogs, Whiskey, and Intellectual Property: Need I Say More?

In this episode of The Briefing by the IP Law Blog, Weintraub Tobin IP attorneys Scott Hervey and Josh Escovedo discuss a recent decision by the Trademark Trial and Appeal Board involving winemaker Delicato Vineyards and a hard cider maker from Virginia.

Continue Reading The Briefing by the IP Law Blog: Hard Cider Maker Can’t Whine About Trademark Opposition