May
20
2016

Patent Arcade Seeks Summer Intern

Hey law students, it’s that time of year again.  The Patent Arcade is seeking a summer intern to assist with news, research, and drafting content for the blog.  A keen interest in video games is a must.  The incumbent will research video game patents, analyze video game lawsuits, and help prepare content for the blog.  If interested, please send a resume, writing sample, and law school transcripts to rdannenberg bannerwitcoff -dot- com.  The position is unpaid.

May
12
2016

Obama Signs Law Allowing Trade Secret Owners to Sue in Federal Court

OBAMA SIGNS LAW ALLOWING TRADE SECRET OWNERS TO SUE IN FEDERAL COURT

Yesterday, President Obama signed the Defend Trade Secrets Act (DTSA), enacting a federal trade secrets law. Much of the law existed under the federal Economic Espionage Act of 1996 (EEA). However, for the first time, the DTSA provides federal jurisdiction for civil cases involving the misappropriation of trade secrets.
The DTSA attempts to bring more uniformity and predictability to litigation of trade secret misappropriation claims by permitting trade secret holders to bring civil claims directly under the federal statute. Before the DTSA, private civil actions for the misappropriation of trade secrets were generally brought in state courts, with federal litigation of these actions being limited to cases having diversity and/or supplemental jurisdiction. Although 47 states have adopted the Uniform Trade Secrets Act (UTSA), which codifies the basic principles of common law trade secret protection, many state legislatures altered the original text of the UTSA before enacting it.1 As a result, state law variations from the UTSA have led to different procedural and substantive standards being applied by state courts in trade secret cases.2

DTSA DOES NOT PREEMPT STATE LAW

Nevertheless, the DTSA (which is grounded in the commerce clause of the U.S. Constitution) will not preempt state law, unlike patent and copyright laws, making the DTSA akin to trademark law coexisting with state law. Under the DTSA, an owner of a trade secret may bring a federal civil action for the misappropriation of a “trade secret that is related to a product or service used in, or intended for use in, interstate or foreign commerce.”3 Civil claims for trade secret misappropriation that are only related to intrastate commerce must still be brought in state courts, unless there is diversity or supplemental jurisdiction. Also, claims under DTSA must be brought within three years after the date on which the misappropriation is discovered or should have been discovered by the exercise of reasonable diligence.

MISAPPROPRIATION OF TRADE SECRETS


The DTSA definitions of “trade secret” and “misappropriation” generally mirror those of the UTSA. The DTSA defines “trade secret” as all forms and types of information that (1) the owner thereof has taken reasonable measures to keep such information secret; and (2) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by another person who can obtain economic value from the disclosure or use of the information.4 The in-depth definition of the term “misappropriation” in the DTSA includes, in part, (1) “acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means,” or (2) “disclosure or use of a trade secret of another without express or implied consent by a person who … used improper means to acquire knowledge of the trade secret.”5 The DTSA states that the term “improper” includes “theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means,” but excludes “reverse engineering, independent derivation, or any other lawful means of acquisition.”6

SEIZURE AS A REMEDY


Like most state trade secret law, remedies under DTSA include injunctive relief and monetary relief. However, seizure of property is a new remedy contemplated by the DTSA. A seizure request can be brought on an ex partebasis for the seizure of property necessary to prevent the dissemination of the trade secret that is the subject of the action.
However, the requirements for obtaining seizure are quite numerous and stringent under the DTSA. The party moving for the seizure must file an affidavit or verified complaint that satisfies each of the requirements listed under the statute.7 DTSA expressly states that an order for the seizure of property may be granted only in “extraordinary circumstances.” For example, in addition to specific requirements listed in the statute, if it clearly appears from specific facts that an immediate and irreparable injury will occur if such seizure is not ordered, the harm to the applicant of denying the application outweighs the harm to the legitimate interests of the person against whom seizure would be ordered, and the applicant is likely to succeed in showing that the information is a trade secret and the person against whom seizure would be ordered misappropriated or conspired to misappropriate the trade secret of the applicant by improper means.8
The DTSA includes several protections for the party against whom seizure is ordered. Namely, the statute requires the narrowest seizure of property necessary, stipulates that the court must schedule an evidentiary hearing within seven days (during which the order may be modified or dissolved), and allows a party against whom the order has been issued to move the court at any time to dissolve or modify the order after giving notice to the party who obtained the order.9 Also, any seized property remains in the custody of the court.10

WHISTLEBLOWER IMMUNITY


A widely discussed and controversial provision of the DTSA, not present in state trade secret law, is whistleblower immunity and the consequential affirmative duties placed on employers. Specifically, the DTSA provides “immunity from liability for confidential disclosure of a trade secret to the government or in a court filing” if a disclosure of a trade secret disclosure is made “in confidence to a Federal, State, or local government official…or to an attorney; and…solely for the purpose of reporting or investigating a suspected violation of law,” or is made “in a complaint or other document filed in a lawsuit…if such filing is made under seal.”11 Additionally, an individual who files a lawsuit for retaliation by an employer for reporting a suspected violation of law may disclose the trade secret to the attorney of the individual and use the trade secret information in the court proceeding.12 However, the individual must file any document containing the trade secret under seal and otherwise cannot disclose the trade secret, except pursuant to court order.13
Also, in order to receive all available remedies under the DTSA, employers have an affirmative obligation to provide notice to employees of the immunity provisions.14 Failure to comply with this affirmative obligation will preclude the employer from recovering “exemplary damages or attorney fees.”15 The employer may provide the notice in any contract or agreement with an employee that governs the use of a trade secret or other confidential information or by providing a cross-reference to a policy document provided to the employee that sets forth the employer’s reporting policy for a suspected violation of law.16 Also, the definition of “employees” in the DTSA is very broadly defined in that it includes conventional employees as well as any individual performing work as a contractor or consultant.17 In view of the notice requirement, employers may be advised to review all employment-related contract or agreement documents that govern the use of a trade secret or other confidential information to ensure that these documents provide notice to employees of their rights under the immunity provision of the DTSA. The notice requirement applies to “contracts and agreements that are entered into or updated after the date of enactment [of the DTSA].” Therefore, while employers are not explicitly required to provide notice of the immunity to current employees, it may be advisable to amend contracts (or any other agreements that govern the use of a trade secret or other confidential information) with current employees in accordance with the notice requirement of the DTSA.

NO INEVITABLE DISCLOSURE DOCTRINE UNDER THE DTSA


The DTSA also protects former employees by restricting employers from preventing former employees from working at another company on the basis of the inevitable disclosure of trade secrets. Using the inevitable disclosure doctrine, employers in certain states can enjoin a former employee from taking a new job at another company that would inevitably result in the use of the company’s trade secrets. The DTSA does not allow for injunctive relief if doing so would “prevent a person from entering into an employment relationship,” thereby rejecting the inevitable disclosure doctrine.

SUMMARY


Time will tell whether the DTSA brings conformity to trade secret litigation as the new act does not preclude circuit splits. That being said, the DTSA gives litigants more options in enforcing trade secrets at a juncture where many patent rights are being challenged at the U.S. Patent and Trademark Office. Whether to file a civil trade secret complaint in state or federal court will depend on a multitude of factors, such as the desired results of the plaintiff and whether the immunity provisions will apply. The broad definition of “employee” in the DTSA highlights the importance of non-disclosure agreements and the monitoring of relationships with contractors and vendors (both domestic and abroad) that may have access to confidential information. Moving forward, companies should review their policies and agreements to ensure that they are in compliance with the immunity provisions and have a proper notice in place.
Please click here to view Obama’s remarks at the signing of the DTSA.
Please click here to download a printable version of this article.
1See, Brian Yeh, “Protection of Trade Secrets: Overview of Current Law and Legislation,” p. 6.
2See, Brian Yeh, “Protection of Trade Secrets: Overview of Current Law and Legislation,” p. 6.
3See, 18 U.S.C. §1836 (b)(1).
4See, 18 U.S.C. §1839(4).
5See, 18 U.S.C. §1839 (5).
6See, 18 U.S.C. §1839 (6).
7See, 18 U.S.C. §1836 (b)2(A).
8See, id.
9See, 18 U.S.C. §1836 (b)2(F)(iii).
10See,18 U.S.C. §1836 (b)2(D).
11See,18 U.S.C. §1833 (b)(1).
12See, 18 U.S.C. §1833 (b)(2).
13See,18 U.S.C. §1833 (b)(2).
14See,18 U.S.C. §1833 (b)(3)(The DTSA does not provide guidance on any verbiage that would constitute sufficient notice).
15See, 18 U.S.C. §1833 (b)(3)(C).
16See, 18 U.S.C. §1833 (b)(3)(B).
17See, 18 U.S.C. §1833 (b)(4)).
May
09
2016

U.S. Copyright Office Fair Use Index

The U.S. Copyright Office maintains an index of fair use lawsuits.  They recently sent out a reminder about the index, reproduced below.  Definitely worth checking out.

One year
ago, the U.S. Register of Copyrights, in coordination with the U.S.
Intellectual Property Enforcement Coordinator, announced the launch of the U.S.
Copyright Office’s Fair Use Index
(“Index”).  The Index makes the principles and application of fair
use more accessible and understandable to the public by providing a basic explanation of
fair use as well as presenting a regularly updated searchable database
of summaries of major fair use decisions.  So far, over 180 U.S. fair use
decisions have been summarized, spanning every appellate jurisdiction and many
categories of use, from music to digitization to parody.

In the
past year, the Fair Use Index has received tens of thousands of page views and
has led to thousands of downloads of the Copyright Office’s case summaries.
These include more than 1,000 downloads for each of the following summaries: 

Rosen v.
eBay, Inc. (2015)Katz v.
Google Inc. (2015)Cambridge
Univ. Press v. Patton (2014)Fox News
Network, LLC v. TVEyes, Inc. (2015)Fox
Broad. Co. v. Dish Network, LLC (2015)Kienitz
v. Sconnie Nation, LLC (2014)

The Fair
Use Index is not a substitute for legal advice, but is a helpful starting point
for those seeking to better understand how courts across the country have
applied the fair use doctrine to a variety of fact patterns. The Index is
updated periodically.
The Fair
Use Index may be accessed on the Copyright Office’s website at http://copyright.gov/fair-use/index.html.

May
04
2016

Banner & Witcoff is HIRING! Attorneys and Law Clerks wanted.

Banner & Witcoff is seeking Associate Attorneys with 1-7 years of experience and a background in electrical engineering, computer engineering or computer science for its Washington, DC office. Patent prosecution experience is preferred. Associates will work closely with clients and senior attorneys in the preparation and prosecution of patent applications, with opportunities available for involvement in opinion work and litigation.  Admission to a state bar and to the USPTO are required. Qualified candidates should submit a resume, cover letter, writing sample, and transcripts (law school, undergraduate and/or graduate) through this link.  Candidates may also be considered for our Chicago office.


Banner & Witcoff is also seeking current or prospective law students to work in its Washington, DC office as full time Law Clerks. The incumbent’s primary responsibilities will be preparation and prosecution of patent applications. The incumbent may also participate in various activities such as engaging with clients, assisting in ongoing litigation projects, performing legal research, and assisting with legal opinions and other IP-related projects. Full time law clerks may also be eligible to receive tuition assistance for law school.  Candidates must have an electrical engineering, computer engineering or computer science background and must be eligible to sit for the patent bar (see www.bit.ly/uspto-oed for more info).  To be considered, please submit a resume, cover letter, writing sample, and all post-secondary transcripts through this link.

Banner & Witcoff is dedicated to excellence in the specialized practice of intellectual property law, including patent, trademark, copyright, trade secret, computer, franchise and unfair competition law. The firm actively engages in the procurement, enforcement and litigation of intellectual property rights throughout the world, including all federal and state agencies, and the distribution of such rights through licensing and franchising. The firm has more than 90 attorneys and agents in its Chicago, Washington, Boston and Portland offices.
Mar
03
2016

Patent Arcade Patent Search App now available on iOS

We are happy to announce that the Patent Arcade Patent Search app is now available for iOS. This handy tool lets you search and review patents on the go, displaying patents in both text and PDF formats.  BOTH formats include drawings, too!

Have you invented something? Do you have a great idea for a patent? Want to check to see if someone else has already come up with the same idea? Use Patent Arcade’s free Patent Search tool to search the records of the United States Patent & Trademark Office.

The Patent Arcade Patent Search app is an easy to use mobile searching resource. Just type in a patent number or a few keywords and see the results in seconds.  Search results are provided by Google, so international patents are available as well.

Two ways to search: 1) type in a PATENT NUMBER or published application number, and review the patent in easily readable form on your iOS device; 2) search FULL TEXT by entering any search term you want and instantly see the results. PDFs of the original documents are also available.

As an added bonus, quick access to the Patent Arcade legal blog is also included within the app.  No legal services are provided. App is for informational use only.

Download it today!
Feb
03
2016

Job Vacancy: Digital Image Rights and Reproduction Specialist

I don’t normally post job openings, but this one looked cool. The Smithsonian Institution is looking for someone that researches, negotiates, obtains, and documents licenses from copyright holders to use images of NPG collection objects in exhibitions, programs, and publications, as well as public awareness and fund raising efforts. S/he also reviews internal and external requests for permission to reproduce NPG collection object images. S/he contributes significantly to the creation, management and distribution of the NPG’s digital image resources. As the NPG transitions toward an open access policy with regard to its collections, the Image Rights Specialist will help to implement this enhanced access and service to the public.

Duties include:
  • Researches copyright restrictions and coordinates rights documentation and permissions clearance for museum collections; locates rights holders and negotiates usage and licensing agreements; provides guidance to staff regarding restrictions and copyright.
  • Monitors evolving opinions and policies regarding copyright; liaises with SI offices regarding the Institution’s right’s policies; assists in developing a code of best practices for the museum.
  • Coordinates the museum’s “fee and free” image dissemination policy; distributes images to a wide variety of requestors via digital hosting and transfer protocols.
  • Prepares and uploads high-resolution images to the Digital Asset Management System (DAMS); ensures appropriate metadata is embedded and established naming conventions are applied; digitizes legacy files as needed.
Experience or advance degree (e.g., a JD) required.
Applications due by February 22, 2016.
More info here.
Dec
15
2015

McRO v. Namco Bandai UPDATE: Oral Arguments at Federal Circuit

 

FEDERAL CIRCUIT HEARS ORAL ARGUMENTS IN MCRO V. NAMCO BANDAI: 
Will Patent-Eligibility of Computer Software Survive?

By Ross A. Dannenberg

In the wake of the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank, courts have been struggling to define the line between abstract idea and patent-eligible invention. The Federal Circuit on Friday, December 11, heard oral arguments in McRO Inc. v. Bandai Namco Games America Inc. et al., a case that has the potential to make that line a bit clearer. If you’re already familiar with the posture of this case, you won’t miss anything if you skip to Section 2, infra.

 

Case History

McRO, Inc. (d/b/a PlanetBlue), was founded in 1988 by inventor Maury Rosenfeld (who was in attendance at the arguments), a special effects designer whose credits include “Star Trek: The Next Generation” and “Pee Wee’s Playhouse.” Rosenfeld has two patents on technology for automatically animating lip synchronization and facial expressions of animated characters, a technique commonly used in video game development. Many video game developers previously hired PlanetBlue to do the animation and lip synchronization. However, McRO filed suit against various developers in December 2012, after they allegedly started using the technology on their own without paying a license fee.
The patents in suit are 6,307,576 and 6,611,278.  A representative claim from the ‘278 patent reads:
1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;
obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;
generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and
applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.
McRO’s 16 cases were consolidated before U.S. District Judge George H. Wu of the Central District of California. On September 22, 2014, Judge Wu held that in view of the Supreme Court’s recent decision in Alice barring patents on computer-implemented abstract ideas, McRO Inc.’s animation patents merely describe an automated process to the manual animation methods studios previously used. Judge Wu held that the novelty in McRO’s idea was using rules to automate the selection and morphing of single animation frames tied to a specific sound, changing a character’s lips from closed to open to show the sound “moo,” for example. However, the patents only discussed the automated rules “at the highest level of generality,” according to Judge Wu. The users must come up with their own rules, according to Judge Wu, while the provided rules were mere examples and only partially complete. Judge Wu stated “this case illustrates the danger that exists when the novel portions of an invention are claimed too broadly.” McRO appealed to the Federal Circuit.
Federal Circuit Oral Arguments
Circuit Judges Reyna, Taranto and Stoll heard oral arguments in this matter, with Judge Taranto being the most vocal of the three. The most telling portions of the oral argument are the questions posed by the judges, which we address below.
Judge Taranto’s questions concentrated on the differences between the technology at issue in this case and the technology at issue in previous cases such as Flook, as well as various comparisons to other technologies that use rules-based decision-making, such as autopilot software and facial recognition software. Judge Taranto was also concerned with how to determine when the production of a physical item (which the court considers lip-synched animation to be) can be an abstract idea as a whole, versus when the production of the physical item merely uses an abstract idea. The supposition is that it’s hard to prove that something is merely an abstract idea when it results in a physical item being produced. Judge Taranto also questioned whether the genus of a species is always abstract, or whether the genus itself can also be patent-eligible.
Judge Reyna asked multiple questions regarding whether the district court erred procedurally. First, Judge Reyna posed a question regarding whether Judge Wu erred by stripping out portions of the claims found in the prior art, or whether claims must be considered as a whole when determining eligibility under 35 U.S.C. § 101. Judge Reyna also seemed concerned that Judge Wu added a third step to the Supreme Court’s two-step process articulated in Alice.
Judge Stoll was the only judge who appeared to be interested in how to improve patent-eligibility determinations under Section 101. Judge Stoll asked both parties what test could be used to perform subject-matter eligibility determinations that comports with the Alice case, while also asking the appellant (McRO) what test the district court should have used based on the McRO’s argument that the district court erred in the first place. Judge Stoll was also interested to hear what the appellee (Namco Bandai) thought would need to be added to the claims—short of claiming every actual rule needed to perform automated lip synchronization and animation—before the claims would be considered subject matter eligible under Section 101.
This case is important because of the level of detail with which the computer software is claimed in the patent. The software is claimed using descriptive language to recite a specific method (or algorithm) the software performs to automate the animation and lip synchronization. Most patent practitioners agree that the level of detail used in the claims in the McRO patents is commensurate with the level of detail used in hundreds of thousands of issued software patents. Indeed, even the appellee admitted during oral arguments that the claims at issue in this case are more “dense” than claims typically challenged under 35 U.S.C. § 101. If the Federal Circuit affirms the district court based on the level of detail with which the invention is claimed in this case, then the validity of some of those other patents is more easily called into question. However, those patents remain valid until shown otherwise in court or through a USPTO inter partes review proceeding.
 
Reading the Tea Leaves
Despite this prospect, in view of the overall tone of the questions, the panel seems more likely than not to reverse the district court’s holding of invalidity under Section 101, and remand this case for further proceedings to reassess 101 eligibility using the correct standard, and/or also to determine infringement and validity under 35 U.S.C. §§102-103 (novelty and obviousness). There were several unanswered questions regarding issues such as the incorrect application of Supreme Court precedent in Alice, stripping claims of “prior art” subject matter before performing the analysis, and adding an improper third step to the Supreme Court’s two-step analysis to lead one to believe that the court is likely to do otherwise.
Oct
19
2015

Historical Interlude: The Magnavox Co. v. Mattel, Inc.

An interesting story came across my email recently, and I wanted to share it with our readers, especially the attorneys who follow our blog.  For those who don’t know, the Federal Circuit Court of Appeals hears all appellate patent cases.  The Federal Circuit was formed Friday, October 1, 1982.  Before that all patent cases were heard by the Court of Customs and Patent Appeals (CCPA).  Many people don’t realize this, but the very first appeal ever filed in the newly formed Federal Circuit was a VIDEO GAME case!  Yes, it was appeal no. 83-500, The Magnavox Co. v. Mattel, Inc.  Some of the attorneys for the appellants include Dennis Allegretti and Mark T. Banner, both of our firm.  The article I read is more of a historical account as opposed to a legal analysis, but an interesting read nonetheless.  Here is the first two paragraphs to whet your appetite:

For many years, George E. Hutchinson, the first clerk of the Federal Circuit, told the story that on the first day of the court’s existence, Friday, October 1, 1982, a young lawyer from Chicago showed up bright and early at his office and filed an emergency motion for a stay pending appeal—even before the judges of the court had been sworn in.
Just over thirty-two years after the oral argument in that first appeal, I became the last counsel of record who can give a first-person account of the oral argument and the case, and therefore I take this opportunity to tell the story. This was appeal no. 83-500, The Magnavox Co. v. Mattel, Inc., the first appeal from the district court filed in the Federal Circuit. The public knows nothing about it because no opinion was released—the parties reached a settlement literally on the eve of an opinion being published.

The article is by Edward D. Manzo, and you can look it up in The Federal Circuit Bar Journal, Vol. 25, No. 1.

Sep
23
2015

“Happy Birthday to You” in public domain

Good Morning to You Productions Corp., a production company working on a documentary about the song, sued Warner Chappel Music in New York federal court in June 2013, claiming that “Happy Birthday to You” was first copyrighted in 1893 and thus is long past expiration. The suit alleges Warner/Chappell had unlawfully collected millions of dollars in licensing fees for the tune by claiming it holds the exclusive right to control distribution, performances and reproductions of it. Good Morning to You said it had filed suit in response to Warner/Chappell’s demand that it pay a $1,500 licensing fee to use the song in a documentary about the history of the song.

Well yesterday, September 22, 2015, a California Federal judge agreed, and ruled that Warner Chappel’s copyright is invalid, except with respect to a narrow piano arrangement of music to accompany the song. U.S. District Judge George H. King found that Warner had never acquired the rights to the song’s lyrics, according to Tuesday’s decision. In copyright records, court records and several agreements over the use of the song, nowhere was there discussion of the lyrics to “Happy Birthday,” according to the decision. Some records mention the melody or piano arrangement, but not the words to the song, the judge said.

This means that video game developers can use the song “Happy Birthday to You” without fear of the Warner Chappel Music Police sending you a nasty-gram, demanding a royalty. The case is Good Morning to You Productions Corp. et al v. Warner Chappell Music Inc. et al., case number 2:13-cv-04460, in the U.S. District Court for the Central District of California.

Read more at Law360.com.

Jun
03
2015

A little Kickstarter love… BEARD (the game)

I sometimes meet with indie/startup game developers and provide guidance and advice based on my own experiences in the industry and having worked with lots of young companies. I recently met two of the developers of Beard: Life Grows On, and wanted to share their story. 

Beard is a 2D Rogue­Like experience with a focus on exploration and discovery. You are one of a few brave enough to attempt the ascent. Climb through grassy forests, treacherous mountains, frigid ice­lands, and even glorious skies on your journey to reach the Top and become the King.  The game features

  • Tight Platforming Controls
  • Unique enemy behavior and bosses
  • Permanent death
  • Fine-tuned random level generation
  • Dozens of unique and fun items
  • 3+ regions with their own environments and terrain generation
  • Painted 2D art, with sweeping parallaxed backgrounds
  • Interesting world with a cryptic history
  • Originally composed soundtrack
  • Self-trimmed beard appearance (bows, braids, colors, etc.)
  • Dynamic quests featuring NPCs and their landmarks
  • Secrets, so many secrets…
I played the the development version, and its a fun concept.  They have a lot of work ahead, so I wanted to throw a shout out there way.  They are currently raising funds on Kickstarter, and could use your support (yes, I am a backer of theirs on Kickstarter, too).
Here’s a teaser for pique your interest:
May
21
2015

Patent Lawsuits Decline – Patent Lawsuits to Become Harder to File

For the first time since 2009, new patent lawsuit filings declined in 2014 from the previous year. Lawsuits dropped by 13 percent, a significant shift from the numbers of cases over the previous five years, caused in part by the U.S. Supreme Court’s landmark Alice ruling, according to a new study released Wednesday by PricewaterhouseCoopers.

In addition, the U.S. Supreme Court has quietly adopted a rule that will increase pleading standards for filing patent lawsuits. In an order in late April, the high court without comment adopted changes to the Federal Rules of Civil Procedure that were approved in September by the Judicial Conference of the U.S. and will take effect Dec. 1. unless they are modified by Congress, which is considering bills that would raise patent pleading standards even beyond what the new rule requires.

The rule changes cover several areas, but one is of particular concern in patent litigation: the abolition of Rule 84, which provides model forms that attorneys can rely on in several situations, including Form 18, a model patent complaint.On Form 18, a plaintiff is required to include include little more in a patent complaint than the name and number of the patent and an allegation of infringement. The Judicial Conference said that such model complaints are outdated.

The elimination of Form 18 would just subject patent complaints to the pleading standards established by the Supreme Court in its landmark Twombly and Iqbal decisions, which require plaintiffs demonstrate that their claims are plausible, rather than simply putting the defendant on notice of the claim.
More on the topics over at Law360.com.
May
18
2015

Apple v. Samsung appeal decided: design patents good, trade dress bad.

May 18, 2015: Today the Federal Circuit decided the appeal in the first Apple v. Samsung case, upholding a majority of Apple’s damages award, namely, damages attributable to patent infringement.  However, the court reversed the damages attributable to trade dress protection, ultimately finding that Apple’s uregistered trade dress in its older iPhones was functional and therefore not protectable under trade dress law:

Apple has failed to show that there was substantial evidence in the record to support a jury finding in favor of non-functionality for the unregistered trade dress on any of the [required] factors. Apple fails to rebut the evidence that the elements in the unregistered trade dress serve the functional purpose of improving usability. Rather, Apple focuses on the “beauty” of its design, even though Apple pursued both “beauty” and functionality in the design of the iPhone. We therefore reverse the district court’s denial of Samsung’s motion for judgment as a matter of law that the unregistered trade dress is functional and therefore not protectable.

On the up side, the Federal Circuit’s decision is a strong win for patent rights, and design patent rights in particular.
What’s the relevance to video and computer games?  Consider this.  Video game designers often rely on trade dress to protect the look and feel of the game as a brand or source indicator, in addition to relying on copyright protection.  However, to the extent the trade dress is essential to the use or purpose of the video game or it affects the cost or quality of the video game, then a court could ultimately find that the trade dress is functional and therefore not protectable.  The result?  In order to ensure that you are fully protecting your computer game, design patents for important user interface features should not be overlooked.
The case is Apple Inc. v. Samsung Electronics Co. Ltd. et al, Case 14-1335, Fed. Cir. May 18, 2015.  Read the full decision here.
May
06
2015

What NOT to name your product…

We get asked… often… what sorts of names are best for your video game.  This post isn’t a treatise on how to name your video game.  This post is a poster child for what NOT to name a product.  Never go with a generic or descriptive name.  Despite use of the word “brand” on the box, these guys chose a very BAD name:

Apr
28
2015

Google announces patent purchase program during May 2015

Today Google announced a new initiative to try and keep patents out of the hands of patent trolls, entities whose only business is amassing intellectual property and filing lawsuits. Google is calling this new effort the Patent Purchase Promotion. Google is basically asking patent owners to trust them. The company has pledged in the past to only use its patents defensively, suing only if someone sues it first. Of course, a company’s stance on patents can shift over time as it moves from young disrupters to entrenched incumbents. 2015 could also be the year Congress takes action. Or not, knowing Congress.

Like many things Google does, this project is a sort of open beta. “We view this as an experiment,” Google wrote in the program’s FAQ. “We are looking for ways to help improve the patent landscape, and we hope that by removing some of the friction that exists in the secondary market for patents, this program might yield better, more immediate results for patent owners versus partnering with non­-practicing entities.”

An experiment indeed. More info over at The Verge. Needless to say, if you are a small entity that has one or two patents and you’re looking for some quick revenue, this may be a good way to go. This is especially true if you want to ensure that your patents don’t end up in the hands of patent trolls non-practicing entities. However, only time will tell how Google uses the patents in the future.

Here is the Announcement.

Mar
11
2015

Job Posting: Research Intern 2015

Each year we take on a Research Intern to help with ongoing case research, updating our patent database, refreshing content, and anything else that comes along.  If you’re interested, please send a cover letter, resume, transcripts, and writing sample to me at my work email address.  Qualified candidates possess the following qualities:

  • Enrolled in an ABA accredited law school
  • Keen interest in video games
  • Interested to learn more about Intellectual Property law (patents, copyrights, trademarks…)
  • Does NOT have a technical background.  For reasons I won’t go into here, I am unable to consider candidates who are eligible to take the patent bar.  This is a bright line rule.  No exceptions.  If you are patent eligible and are interested in a Summer Associate position, however, send your materials to dcjobs at my work’s email domain.  We are still considering candidates in DC.
  • Preference will be given to candidates in the DC area.  However, we have taken on remote interns in the past.
Thanks for your interest.
Feb
19
2015

EVENT: More Than Just a Game: Interactive Entertainment and Intellectual Property Law

Queen Mary University Law School is hosting an event on 24 April 2015.  Some details:

April 24, 2015

Time: 2:30pm
Venue: Lecture Theatre, Centre for Commercial Law Studies, Queen Mary University of London, 67-69 Lincoln’s Inn Fields, London WC2A 3JB

Interactive Entertainment is bursting with Intellectual Property. In this environment, creativity meets the latest technologies, thereby spawning cutting-edge law issues. This seminar will address some of the fundamental questions related to the legal nature of video games, the boundaries of protectability, and the relationship between Interactive Entertainment and Intellectual Property law, including digital exhaustion and key selling, and the issues surrounding interactivity as a form of creativity.

This seminar will provide a platform for academics, practitioners, developers and publishers to share views, exchange ideas, discuss challenges and explore solutions; in order to map the Intellectual Property issues that must to be addressed for a more appropriate promotion and protection of interactive entertainment works.

Click here for the event page.

I will be one of the speakers at the event.  Hope to see you there.

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