Inter Partes Review is a proceeding that the USPTO adopted in 2012 that allows a challenge to an issued patent based on obviousness or lack of novelty. Inter Partes Review has become an increasingly common tool to invalidate a patent as an alternative to litigation in Federal Court. In Covidien LP v. University of Florida Research Foundation Inc., the US Patent Trial and Appeal Board addressed the issue of whether sovereign immunity would extend to a state actor who owns rights to a patent being challenged in an administrative forum such as an Inter Partes Review. Under the 11th Amendment of the U.S. Constitution, the 50 States of the Union and their branches, have immunity from a lawsuit instituted by a private party. Court decisions interpreting the 11th Amendment have construed it broadly to extend this immunity not only to lawsuits in a court of law, but also to other adjudicative proceedings such as those of administrative agencies.
An Inter Partes Review in many way parallels a lawsuit in a court of law. For example, there is discovery, depositions, motions, and oral argument. Further, a panel of judges decide not only the outcome of the proceeding, but also whether the proceeding may even be instituted. In Covidien LP v. University of Florida Research Foundation Inc., the U.S. Patent Trial and Appeal Board ruled in favor of the University of Florida Research Foundation. The U.S. Patent Trial and Appeal Board decided that due to the similarities between civil litigation and an InterPartes Review, the University of Florida Research Foundation, being an arm of the State of Florida, was entitled to assert sovereign immunity as a defense to the institution of an Inter Partes Review. This decision may have an effect on the number of Inter Partes Reviews that are instituted against public research institutions, such as state universities.
Paul McCartney recently filed suit in United States District Court, to reclaim ownership rights of some of the Beatles' most famous early songs. The suit seeks a declaratory judgment that Mr. McCartney is entitled to reclaim copyright interest in several early songs under the termination provisions of the Copyright Act. Under this provision of the Copyright Act, authors who assigned their copyright interests to artistic works before a 1978 revision of the law, are allowed to reclaim the rights after 56 years have passed. Mr. McCartney has been serving advance notice of his intent to reclaim the rights as required by law.
Unlike most countries, the United States copyright law provides musicians and songwriters an opportunity to regain ownership of works that they transferred to outside entities, such as record labels and music publishers after a certain period of time. For many musicians, especially those who had hits decades ago, copyright termination has become a powerful way to regain the rights in their works and to gain financial leverage with their record companies and music publishers.
Michael Jackson purchased the rights to various Beatles songs in 1985 and later formed Sony/ATV as a joint venture with Sony. Last year, Sony bought out the share of Mr. Jackson's estate for $750 million.
One potential issue in the case is a recent ruling by a British court that found the band Duran Duran could not reclaim rights to its songs because the band's original publishing agreements were subject to English law. Mr. McCartney's suit notes, he and John Lennon signed a series of publishing contracts in Britain beginning in 1962, assigning his ownership rights to some of the popular early Beatles songs. As such, Sony/ATV have begun to suggest that the copyright rule may not apply to Mr. McCartney's songs.
The latest chapter in the Apple v. Samsung litigation, previously blogged about here, involves a determination by the Supreme Court of the United States that damages for design patent infringement can be calculated based on only a component of a product, rather than the entire product, if only that component is found to infringe. This is significant because Apple's $400M damages award was based on Samsung's total profit for sales of the infringing phones. However, Apple's design patent only covered certain features of Samsung's phones, and according to the language of the patent statute, as Samsung argued, it should only have to pay damages on the infringing components, not the entire product.
Last year, the Federal Circuit decided UltimatePointer, LLC v. Nintendo Co., Ltd. UltimatePointer brought a patent Infringment suit against Nintendo for its Wii console which uses indirect-pointing remote control devices. The district court ruled for Nintendo on summary judgment concluding that direct-pointing devices, and not indirect-pointing devices, were within the scope of the claims of UltimatePointer’s patent. The Federal Circuit affirmed the district court’s ruling, reasoning that the specification of the patent repeatedly emphasize that the invention is directed to a direct-pointing device and that there are disadvantages with indirect pointing devices. This decision underscores the importance of the specification on how claims are construed. As seen in UltimatePointer, LLC v. Nintendo Co., Ltd., a court may limit the scope of a claim based on the content of the specification.
The Copyright Office has issued final rules updating its practices for receiving the designation of agents under the Digital Millenium Copyright Act ("DMCA"). Until now it was paper based, but after December 1, 2016, the Copyright Office will switch to an electronic system. If you have previously appointed such an agent to receive notices of claimed infringement in order to take advantage of the Safe Harbor provisions for internet service providers, you must file a new designation before December 31, 2017 in order to ensure that your agent is listed in the new electronic directory.
A federal judge in Texas has barred the newly named Houston College of Law from using its name. A U.S. District Court Judge sided with the University of Houston Law Center, granting their request for a temporary injunction in a trademark infringement suit filed against the newly renamed Houston College of Law.
The rival school, formerly known as South Texas College of Law, was sued for trademark infringement in June. The Plaintiff, University of Houston Law Center, claimed the name change and a switch to a similar red-and-white color scheme would confuse prospective students and future employers.
In his opinion, U.S. District Judge Keith Ellison, noted several instances of actual confusion, including a letter delivered to the wrong law school and an email from the Texas Board of Law Examiners sent to the wrong law school. "The appearance of the University of Houston Law Center and Houston College of Law marks are strikingly similar," Ellison wrote. "As an initial matter, two of the three words in defendant's mark appear in UH's mark ("Houston" and "Law"), which is a noteworthy fact in and of itself. Far more troubling, however, is the way in which defendant deploys its mark in the marketplace." Lawyers for the University of Houston call the ruling "a complete victory."
Last Thursday, the Supreme Court announced it will hear Lee v. Tam, an appeal from a Federal Circuit decision that held Section 2(a) of the Lanham Act violates the First Amendment. The case involves a band that was denied registration for the mark “THE SLANTS” under Section 2(a) because the name may disparage individuals of Asian ancestry. This case may also effectively resolve the ongoing dispute involving the Washington Redskins trademarks.
The justices will hear arguments in Lee v. Tam early next year.
Leonard v. Stemtech Int'l, Inc, No. 15-3198 (3d Cir. 2016)
These pictures are worth more than just 1,000 words. In August, the Third Circuit affirmed a jury’s return of a $1.6 million verdict for Andrew Leonard as a result of copyright infringement by Stemtech International. The infringement stemmed from photographs that Leonard took of stem cells using electron microscopes in a highly technical type of photography. The two photographs at issue were created in 1996, then registered with the U.S. Copyright Office in 2007, when he planned to bring the lawsuit.