On March 13, 2020, the United States Court of Appeals for the First Circuit held in Photographic Illustrators Corp. v. Orgill, Inc. that a copyright licensee given the unrestricted right to grant sublicenses may do so without using express language. Specifically, the court held that a sublicense may be implied by the conduct of the sublicensor and the sublicensee. Orgill presents the first ruling by a circuit court on whether copyright sublicenses can be implied in the absence of express permission from a sublicensor. Read More
On March 5, 2020, the U.S. District Court for the Northern District of Illinois entered a final judgment on a jury verdict of approximately $764.6 million in a high profile trade secret misappropriation case — Motorola Solutions, Inc. v. Hytera Communications Corp. Ltd. This judgment was made possible, in large part, by an earlier order from the district court holding that the Defend Trade Secrets Act (“DTSA”) applies to misappropriation that occurs outside the United States if (1) the misappropriator is a U.S. citizen or entity, or (2) “an act in furtherance of” the misappropriation occurred domestically. While Motorola is not the first case to recognize that the DTSA provides a private right of action for foreign misappropriation, it appears to be the first substantive analysis of extraterritorial application of the DTSA to date.
The Motorola case centered on allegations that Hytera, a Chinese rival of Motorola, misappropriated Motorola’s trade secrets to develop and sell a competing digital radio. Motorola claimed that Hytera hired three engineers away from Motorola’s Malaysian office, and that those engineers stole thousands of technical, confidential Motorola documents containing trade secrets and source code. According to Motorola, Hytera used Motorola’s trade secrets to develop a state-of-the-art digital radio that was functionally indistinguishable from Motorola’s digital radios. Hytera proceeded to sell its newly developed radios both internationally and in the United States. While the key actions that enabled Hytera’s acquisition of Motorola’s trade secrets took place overseas, certain actions related to the misappropriation occurred in the United States. In particular, Hytera advertised, promoted, and marketed products embodying the allegedly stolen trade secrets at numerous domestic trade shows.Read More
The USPTO and the Mexican Institute of Industrial Property (IMPI) have announced a new worksharing arrangement that aims to make it easier and faster to obtain a Mexican patent for those who have already obtained a corresponding U.S. patent. The agreement allows IMPI to leverage USPTO search and examination results in an effort to significantly reduce the review time of a Mexican patent application.Read More
On Tuesday July 31, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, and 7. They were to take effect on December 21, 2019, but will now take effect of February 15, 2020.
The impact of the rule, as implemented, is a new requirement for all trademark applicants and registrants to:
- electronically file trademark applications, subsequent documents concerning trademark applications, and documents regarding registrations;
- provide and maintain a working e-mail address for receiving correspondence from the USPTO for each trademark application and registration; and
- provide and maintain an accurate domicile address as a backup for the USPTO to contact if an e-mail correspondence address fails to work.
The right to intellectual property protection in “Artificial Intelligence” generated work gives rise to numerous legal, economic and moral issues. “Artificial Intelligence” (AI) is a comprehensive term used to describe the ability of computer systems to perform tasks normally requiring human intelligence, ranging from translation processes and visual perception to brain simulation.
In this post, we give a brief introduction to the legal issues surrounding claims to copyright in AI generated work in the context of UK law and specifically, who can claim ownership of the work produced.Read More
In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275. Without wading into the technical merits of the decision, the three judge panel of Judges Moore, Reyna, and Chen, issued a decision that, at first glance, sent tremors through those who practice before the PTAB in AIA-based post-grant review proceedings: finding the appointment of PTAB judges unconstitutional.Read More
B.E. Technology LLC v. Facebook, Inc., Appeal No. 18-2356 (Fed. Cir. Oct. 9, 2019) identifies what it means to win in a case. More particularly, the Federal Circuit explained how to determine whether a party is “the prevailing party.” B.E. Technology (“B.E.”) brought a patent infringement suit in district court against Facebook and the case was stayed pending inter partes review. The Patent Trial and Appeal Board ultimately held the claims of the patent in question to be unpatentable, which was confirmed on appeal.Read More
In a notable, albeit not surprising, U.S. Federal Circuit decision today, the panel in Celgene Corp. v. Peter confirmed that an inter partes review finding of unpatentability of a pre-AIA patent is not an unconstitutional taking. (slip op. 2018-1171 (July 30, 2019)).
Noting an opening in the recent Supreme Court decision in Oil States, the Federal Circuit deemed the circumstances exceptional as their basis for review of an issue not before the PTAB in the underlying proceeding. The panel reasoned that the proceeding being “curative” in nature, and the approximately forty year period of time in which PTAB proceedings have existed subjecting granted patents to potential cancellations for that duration weighted against any unconstitutionality.Read More
On Tuesday July 23, 2019, the Federal Circuit declined to fashion design-patent-specific doctrines of exhaustion or repair. Automotive Body Parts Ass’n v. Ford Global Techs., LLC, Case No. 2018-1613, slip op. at 2 (Fed. Cir. July 23, 2019).
Instead, the court reemphasized that the same rules apply to utility patents and to design patents unless otherwise provided by law. Id. Also concluding that “aesthetic appeal” is not functional, the court affirmed the district court’s grant of summary judgment in Ford’s favor. Id. The decision is notable for its widening of the gap between trade dress and design patents and for its reaffirmation of the principle that design patents and utility patents should, whenever possible, receive identical treatment under the law.Read More
On Tuesday July 2, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, 7, and 11. They take effect on Saturday August 3, 2019.
The impact of the rule, as implemented, is a new requirement for a licensed U.S. attorney to serve as counsel for applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (i.e. foreign applicants, registrants, or parties). Previously, a substantial number of such trademark applications had been filed without a U.S. attorney by applicants domiciled in other jurisdictions.Read More