Mary Siceloff

When you hear the name of someone you can’t place or don’t know much about, what do you do?  Chances are, you “Google” them.  Well that is what attorneys are doing to learn more about prospective jurors too!  But they are not stopping there.  They are looking at a number of social media sites, such as Facebook, Twitter, and LinkedIn to learn about the profiles, likes, dislikes, friends, hobbies, biases, religion, and preferences of individuals in the jury pool.  This practice has raised a number of issues related to ethics, privacy, and responsibility.  To date, courts have taken positions ranging from banning these searches to practically requiring them.

Ironically, the use of social media to screen jurors is a key issue in current litigation where Oracle is suing Google in the Northern District of California for allegedly violating the copyright on its Java API code.  Originally, the parties wanted potential jurors to fill out a two-page questionnaire.  Then the parties would spend a day or two evaluating the questionnaires before actually selecting a jury.  But Judge Alsup was suspicious as to why it would take so long to evaluate two-page forms, so he asked the parties if they were planning to use social media to investigate potential jurors based on the information provided.  Bingo!  That is exactly what they were planning to do.  As a result, the questionnaire was scrapped, but that still left open the question of what Internet searches would be permitted during jury selection and the trial.

Judge Alsup addressed these issues in his order last week noting that the “American Bar Association issued an opinion that, within limits, it is ethical for counsel to conduct Internet searches on prospective jurors.”   But the ABA cautioned that judges may limit the scope of searches if necessary under certain circumstances.  California has not issued a rule on the ethical scope of such Internet searches, and the California State Bar has not issued an opinion.

While Judge Alsup stopped short of banning social media searches during jury selection, he expressed misgivings and implored Oracle and Google to voluntarily refrain from scouring the jurors’ social media activity before and during the trial.  Judge Alsup cited three primary arguments against the searches.  “The first reason is anchored in the danger that upon learning of counsel’s own searches directed at them, our jurors would stray from the Court’s admonition to refrain from conducting Internet searches on the lawyers and the case.”  Second, the parties may use information about the jurors to create analogies or make arguments that are targeted at specific jurors.  Judge Alsup noted that “if a search found that a juror’s favorite book is To Kill A Mockingbird, it wouldn’t be hard for counsel to construct a copyright jury argument (or a line of expert questions) based on an analogy to that work and to play upon the recent death of Harper Lee, all in an effort to ingratiate himself or herself into the heartstrings of the juror.  The same could be done with a favorite quote or with any number of other juror attitudes on free trade, innovation, politics, or history.”  Third, Judge Alsup acknowledged the need to protect the privacy of the potential jurors, who “are not celebrities or public figures.”

If Oracle and Google agree to the voluntary ban, then they will be given more time to question the potential jurors during jury selection.  If they do not agree, then each side will have to explain to the potential jurors the “specific extent to which it (including jury consultants, clients, and other agents) will use Internet searches to investigate and to monitor jurors, including specifically searches on Facebook, LinkedIn, Twitter, and so on, including the extent to which they will log onto their own social media accounts to conduct searches and the extent to which they will perform ongoing searches while the trial is underway.”  The potential jurors “will then be given a few minutes to use their mobile devices to adjust their privacy settings, if they wish.”  Then until the trial is over, each side will be permitted to view online only what it told the potential jurors it would review and nothing more.

But, is looking at someone’s public presence on social media really any different than driving by their house on a public street or asking them questions about likes and dislikes during jury selection?  It could be.  For example, do the potential jurors know that their social media posts and profiles are publicly accessible, or do they think that only their “friends” can see them?  Do they even know how to limit access to their social media accounts so that only their friends can see them?  What if their account allows friends of a friend to see their posts?  Who knows, one of the lawyers could fortuitously be a friend of a friend of a potential juror.  Also, will there be a chilling effect that causes large numbers of jurors to avoid jury service for fear that something in their social media accounts will be revealed in court?

On the other hand, failure to perform social media searches raises the risk of seating a juror who lied during voir dire or of failing to identify online juror misconduct during a trial.  For example, in Sluss v. Commonwealth, 381 S.W.3d 215, 226-227 (Ky. 2012), two jurors lied about their relationships to the victim’s mother.  A later review of their Facebook profiles revealed that both jurors were “friends” with her.  As another example, review of online posts during a trial can reveal instances where jurors are improperly talking about or researching the case.

In addition, some court have penalized parties who did not timely use searches to ferret out jury bias.  For example, after the trial in Burden v. CSX Transp., Inc., No. 08-cv-04-DRH, 2011 WL 3793664 (S.D. Ill. Aug. 24, 2011), the defendant’s online searches revealed that certain jurors failed to disclose relevant information on questionnaires and during voir dire.  But the Court said it was too late stating “defendant’s motion for a new trial based on juror dishonesty must be dismissed because the basis of defendant’s objections might have been known or discovered through the exercise of reasonable diligence.”  In another case, Johnson v. McCullough, 306 S.W.3d 551 (Mo. banc 2010), the Missouri Supreme Court suggested that competent representation in light of advances in technologies imposes a duty to conduct certain types of online searches during voir dire. Specifically, the court stated that “[l]itigants should not be allowed to wait until a verdict has been rendered to perform a Case.net search for jurors’ prior litigation history when, in many instances, the search also could have been done in the final stages of jury selection or after the jury was selected but prior to the jury being empanelled.”

Given the variation in rules across jurisdictions and judges, attorneys need to be keenly aware of the applicable rules for investigating potential and actual jurors in their cases and the risks associated with failure to perform the allowable searches.

The Federal Circuit Court of Appeals recently addressed an issue of first impression: what is the “actual notice” required under 35 U.S.C. §154(d) for a patent owner to recover damages for a defendant’s infringing conduct that occurred before the patent issued?

Most people assume that a plaintiff cannot recover damages for patent infringement for infringing actions that took place before the patent issued (pre-issuance damages). However, the American Inventors Protection Act of 1999 does for just that. Section §154(d) provides that a patent owner can recover damages from the defendant infringer for infringement that occurred after the patent application was published if the defendant had actual notice of the published patent application and if the invention claimed in the published patent application is substantially identical to the invention claimed in the issued patent. For patent litigators, the situation rarely exists because the published claims are almost always amended during prosecution, resulting in different claims in the issued patent.

Rosebud LMS, Inc. sued Adobe Systems, Inc. for infringement of three different patents, from 2010 through 2014 in the district court of Delaware. The first and second cases were dismissed. The third case, filed in 2014, alleged that Adobe infringed Rosebud’s U.S. patent no. 8,578,280. The ‘280 patent and was a continuation of the second patent, which was a continuation of the first patent. All three of the patents covered methods for allowing collaborative work on a computer network.

Adobe moved for summary judgment on the grounds that Rosebud had no remedy. Adobe contended that Rosebud was not entitled to damages after the patent had issued because Adobe had ceased using the technology in 2013, ten months before the ‘280 patent issued. Adobe also argued that Rosebud was not entitled to pre-issuance damages under §154(d) because Adobe had not received actual notice of the published ‘280 patent application.

The trial court granted the summary judgment for Adobe, and Rosebud appealed.
The Federal Circuit affirmed the decision, noting that this was a case of first impression.

On appeal, Adobe showed that there was no disputed question of fact as to whether it had actual acknowledge of the ‘280 patent. Adobe also argued that the court should interpret §154(d) to require that a patent applicant actively provide notice of the published patent application to a potential infringer in order to recover pre-issuance damages.

The appellate court agreed with Adobe and held that §154(d) requires actual notice, not constructive notice, as Rosebud had argued. However, the court disagreed with Adobe that §154(d) requires an affirmative act by the patent applicant to notify the potential infringer. The court held that “actual notice” should be interpreted according to its ordinary meaning – knowledge – and is not limited to an affirmative act of notice by the plaintiff. (Id. at *5.)

The court explained, at id., that there are good policy reasons to support Adobe’s proposed interpretation of §154(d), but that Congress must amend the statute:

“Requiring the applicant to affirmatively provide notice to potential infringers is in line with the extraordinary nature of statutory pre-issuance damages. Moreover, a strict rule requiring notification by the applicant is simpler to implement and does not leave the accused infringer in the difficult situation of having to rebut allegations that it knew of the published application. If Congress wishes, it can amend the statute to require an affirmative act by the patentee. We cannot.”

The Federal Circuit quickly disposed of Rosebud’s three arguments that Adobe had actual knowledge of the published ‘280 patent application. First, the court held that Adobe’s knowledge of the grandparent patent to the ‘280 patent is irrelevant, as §154(d) requires that the invention claimed in the published patent application be substantially identical to the invention claimed in the issued patent. Adobe’s knowledge of the grandparent patent did not give it knowledge of the claims of the issued ‘280 patent.

As to Rosebud’s second argument, the appellate court found it “border[ing] on the frivolous” to suggest that a few emails in Adobe’s possession referring to Rosebud more than two years before the ‘280 patent application was published were sufficient evidence to show that Adobe monitored Rosebud’s patent applications and would have found the published ‘280 application.

As to Rosebud’s third argument, the Federal Circuit held that it was not reasonable to expect that Adobe’s counsel would have searched for related patent applications in the second litigation when the second litigation had not even reached claim construction.

Thus, while it is important in any patent infringement case to consider whether pre-issuance damages are possible, they are still a highly unusual remedy and may become even more so in the future. Patent applicants who have published applications that may lead to infringement actions should evaluate the need to notify potential infringers pre-issuance and the consequences of such notification.

On February 16, 2016, Magistrate Judge Sheri Pym in the United States District Court for the Central District of California issued an order compelling Apple, Inc. to provide technical assistance to the F.B.I. so it can access an iPhone 5C that belonged to a shooter in the recent San Bernardino, California attack.

The order, which issued without obtaining Apple’s initial input, requires Apple to write new software and take other measures to disable passcode protection on the attacker’s iPhone. The court issued the order under 28 U.S.C. § 1651, the “All Writs Act,” which authorizes the United States federal courts to “issue all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of law.” The order also allowed Apple to make a request to the court for relief from compliance with the order if such compliance would be unreasonably burdensome. Apple made this request via a motion to vacate the order on February 25, 2016. In its motion to vacate the order, Apple raises three general arguments.

First, Apple argues that the relief the government seeks is not justified under an extension of the All Writs Act because law enforcement assistance by technology providers is already addressed by existing laws that specifically omit providers like Apple from their scope. Apple argues the Communications Assistance for Law Enforcement Act (“CALEA”), 47 U.S.C. § 1001 et seq., specifies when private companies must assist law enforcement in the decryption of electronic communications obtained during surveillance, and the nature of the assistance such companies must provide. Specifically, under CALEA a company has no obligation to assist law enforcement where the company does not retain a copy of the decryption key, which Apple says it does not have in this case. Thus, Apple asserts that Congress opted not to provide courts with the authority to compel companies like Apple to assist law enforcement in cases such as this one where Apple designed and manufactured the device but did not retain a decryption key. Therefore, Apple says the government’s attempt to use the All Writs Act to expand the obligations imposed by CALEA is improper and violates the separation of powers doctrine.

Second, Apple argues the Supreme Court’s decision in United States v. New York Telephone Co., relied upon by the government, does not apply. In New York Telephone Co., the Supreme Court held that an order under the All Writs Act was proper because it was consistent with Congress’s intent to compel third parties to assist the government in the use of surveillance devices, and it satisfied a three-part test imposed by the Court. Here, however, Apple argues it does not satisfy the three-part test. Apple says nothing connects it to the case such that Apple could be ordered to help the government because Apple is a private company that does not own or possess the phone at issue, Apple has no connection to the data that may or may not exist on the phone, and Apple is not related in any way to the events giving rise to the investigation. Further, Apple argues the order would impose an oppressive burden on Apple and those who use an iPhone because the order would require Apple to develop new software that destroys the security features that Apple has spent years building. In addition, Apple argues the government failed to demonstrate that the requested order was necessary because, without consulting Apple or reviewing its public guidance regarding iOS, the government changed the iCloud password associated with the attacker’s account, thereby preventing the phone from initiating an automatic iCloud back-up.

Third, Apple argues the order would violate both the First Amendment’s right to freedom of speech and the Fifth Amendment’s due process clause. As to the First Amendment, Apple asserts computer code is treated as speech within the meaning of the First Amendment and the order seeks to compel Apple to write new software that advances views contrary to its position on data security and the privacy of citizens. As to the Fifth Amendment, Apple argues that conscripting a private party, with a limited connection to the crime, to do the government’s work violates Apple’s substantive due process right to be free from arbitrary deprivation of its liberty.

In addition to Apple, numerous third-parties have filed amicus briefs on all sides of the debate, raising various issues. These issues range from arguments that back doors would weaken technology companies’ ability to protect their customers’ information, which would put customers at heightened risk of being hacked, to arguments that the use of outdated rules improperly expands government power without Congress’ approval. On the other side, some argue this is an isolated incident involving a single iPhone and access to this particular iPhone is necessary to keep Americans safe from future attacks.

The parties are expected back in court on March 22, 2016, when the court may entertain further oral argument on the issues.

Kylie Jenner has finally decided to step out from behind her older sisters and get to work on her own independent ventures. In furtherance of this desire, Ms. Jenner filed numerous federal trademark applications in April and November 2015. The applications relate to Ms. Jenner’s first name, as well as her full name. As you may know, a trademark provides its user the exclusive right to use the mark in connection with the class of goods in which the mark is registered. For example, the registration of KYLIE for fashion apparel, or handbags, would effectively preclude anyone from utilizing KYLIE in conjunction with that good without first obtaining Ms. Jenner’s permission. You can likely see why this might be a problem.

Ms. Jenner’s attorneys filed the applications in the international classes of goods that cover “All-purpose carrying bags; athletic bags; back packs; cosmetic bags; cosmetic carrying cases; duffle bags; handbags; purses and wallets; tote bags; umbrellas.” The other applications cover goods such as clothing, sleepwear, swimwear, and undergarments; jewelry; and fragrances. Although the registration for the mark KYLIE JENNER should not be too contentious, Ms. Jenner’s team of attorneys also filed two applications for the mark KYLIE for use in “Entertainment in the nature of providing information by means of a global network in the fields of entertainment and pop culture; entertainment services, namely, personal appearances by a celebrity, actress and model” and also “Providing information by means of a global computer network in the field of fashion.” The other KYLIE application covers “Advertising services, namely, promoting the brands, goods and services of other; endorsement service, namely promoting the goods and services of others.”

Read More