Intellectual Property

One of the most common forms of relief sought in trade secret litigation is an injunction preventing the defendants from using or disclosing the plaintiff’s trade secret information.  Although temporary restraining orders and/or preliminary injunctions may be obtained that are in place during the lawsuit, a permanent injunction is entered after trial and typically has no set time period for expiration.  There are various statutes that allow a defendant to seek to modify or dissolve a trade secret injunction at a later date, including a showing that the information that is the subject of the injunction is no longer entitled to trade secret protection.  The recent decision in Global Protein Products, Inc. v. Le (Cal. 6th App. Dist.) helps illustrate the high hurdle a defendant must clear in order to obtain such relief.

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The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on; it is based on the filing dates of any related patent applications that were filed before the application (the priority chain).  This date determines which prior art can be used by the Patent and Trademark Office to determine patentability of the invention and which prior art can be used by competitors to challenge the patent’s validity.

The priority date must be asserted when the patent application is filed.  It is difficult, and sometimes not possible, to correct the priority date if it is not asserted, or improperly asserted, when the application is filed.  Thus, patent attorneys must be careful to make sure that the correct priority date is stated in the application at the time of filing.

This issue was recently addressed by the Federal Circuit Court of Appeals in Honeywell International v. Arkema Inc., 2019 U.S. App. LEXIS 29478 (October 1, 2019).  In that case, Honeywell filed a patent application in 2014 with a priority date of 2002.  The patent application was amended during prosecution to change what was claimed as the invention, but the applicant failed to change the priority chain to list the related applications that corresponded to the invention as claimed.

The patent was issued in 2015.  Shortly thereafter, Arkema filed two petitions for post grant review, challenging the patent in the Patent Trial and Appeal Board.  Arkema alleged that the patent application was not entitled to the 2002 priority date because the claims, as amended, were not supported by the related applications going back to 2002, but were only supported by the 2014 application itself.  According to Arkema, the priority date was 2014, not 2002.  Based on the 2014 date, Arkema alleged that the patent was invalid due to prior art that became known between 2002 and 2014.

Honeywell argued that it had failed to list the correct related applications in the priority chain.  Honeywell requested that the PTAB permit it to file a motion for leave to file a petition to the Director of the PTO for a Certificate of Correction to correct the priority chain.

Under 35 U.S.C. § 255, a patent owner must seek to correct a patent by filing a petition to the Director of the PTO for a Certificate of Correction.  In order to obtain a Certificate of Correction, the patent owner must satisfy three requirements: (1) the error must not be the fault of the PTO and must be a clerical or typographical error or another minor error; (2) the error must have been made in good faith; and (3) the correction must not constitute new matter in the patent application.

If a patent is under post grant review in the PTAB, the patent owner cannot file a petition for a Certificate of Correction until it first obtains authorization from the PTAB.  To do that, the patent owner must request leave from the PTAB to file a motion.  If leave is granted, the patent owner must then file a motion in the PTAB requesting that the PTAB cede its jurisdiction back to the PTO Director; if the motion is granted, then the patent owner may file its petition for a Certificate of Correction to the Director.

Honeywell followed the proper steps.  However, the PTAB denied Honeywell’s request and found that the requirements of § 255 were not met.  The post grant review process was then completed, and the PTAB invalidated the claims of the patent.  Honeywell appealed.

The Federal Circuit reversed the PTAB, holding that the PTAB abused its discretion by ruling on whether the requirements of § 255 were met.  The court explained that the authority to decide whether a Certificate of Correction is appropriate belongs only to the PTO Director, not to the PTAB, and that the PTAB cannot decide the merits of the issue.  The PTAB only has the authority to decide the patent owner’s request for leave to file a motion in the PTAB and to decide that motion.

The court found that the PTAB had improperly denied Honeywell the opportunity to file a motion, basing its decision on its view of whether a petition to the Director would be successful.  The PTAB should not have reached the merits at all, let alone without the patent owner being permitted to file a motion.  The court noted that a Certificate of Correction is an appropriate way to correct a priority chain in a patent.  The court vacated the PTAB’s decision and remanded the case to the PTAB, directing the PTAB to allow Honeywell to file its motion asking the PTAB for permission to file a petition to the Director to correct the patent’s priority chain.

When sued for patent infringement, a defendant can still petition for inter partes review (“IPR”) of the asserted patent at the United States Patent and Trademark Office (“USPTO”) if the petition is filed within one year of service of the complaint.  But, as Game & Technology Co. v. Wargaming (Fed. Cir. 2019) reminds us, a plaintiff must properly serve the complaint to trigger the one-year deadline.  Specifically, “[s[ection 315(b) states that ‘[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.’”  35 U.S.C. § 315(b).

Game & Technology involved a patent, U.S. Patent No. 7,682,243 (the “’243 Patent”) for a method and system for an online game where a pilot (the gamer) controls a virtual object, such as a robot character.  As the pilot’s abilities change, so do the abilities of the virtual object that the pilot controls.

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If you’re plugged into the digital world and its constantly emerging meme trends, you’ve probably encountered various “OK, Boomer” memes by now. If you’re unfamiliar with the trend, here is a brief synopsis. OK, Boomer is a phrase that is used in response to members of the baby-boomer generation who have, through their conduct, demonstrated that they are out of touch. For example, when a member of the baby-boomer generation harps on a member of the millennial generation or Generation Z for allegedly lacking the work ethic of the boomer generation, one might respond, “OK, Boomer.” There are various other situations where the phrase could be used, but as you can see, it is either a trendy insult, or an ageist slur, depending on your point of view.

Regardless, the phrase has gone viral since first appearing on the TikTok app a few weeks ago. Now it’s everywhere. It’s on Instagram, Facebook, and various other platforms. It was even used during a session of New Zealand’s Parliament when an older member heckled a 25-year-old over her policy on climate change. With such widespread popularity and trendiness, it’s not surprising that one of the major producers of television, Fox Media, has filed an application seeking to register OK, BOOMER for use in conjunction with a reality, comedy, or game show. Fox is joined by various other parties who have filed applications to use OK, BOOMER in conjunction with goods, including without limitation, clothing, stickers, and decals.

However, there is some skepticism among trademark experts as to whether these applications will result in trademark registration. D.C.-based trademark attorney Josh Gerben has tweeted about the matter and provided his opinion on the likelihood of registration to CNN. Mr. Gerben told CNN that the USPTO will likely “deny all of these applications because OK BOOMER has become a ‘widely used message.’” Mr. Gerben further opined that, “A trademark registration will not issue in a phrase that is commonly used to convey a social or political message. . . . because such a ‘viral’ phrase is incapable of identifying the source of a product or service—which is what trademarks must do to be capable of registration.” Isn’t it ironic that the very reason that Fox Media and other parties want to register the mark is also the same reason they are probably unable to do so?

Perhaps these parties will move forward with their intended use of OK, BOOMER, and then return to the USPTO claiming that, although their mark was initially incapable of designating its source or origin, the mark has now acquired secondary meaning through use in commerce. In other words, by using the mark in commerce in conjunction with a television show, consumers have come to associate the mark, as applied to television shows, with Fox’s show. That would seemingly get around the initial refusal that trademark experts such as Mr. Gerben are anticipating, but we won’t know until it happens.

Virginia Vallejo, a well known Colombian journalist and media personality, authored the memoir “Loving Pablo, Hating Escobar”.  The book is a factual account of her romantic relationship with Pablo Escobar and a chronicle of the rise of the Colombian drug cartel.

Vallejo claimed that certain scenes in the television series Narcos infringed the copyright in her book, and she sued Narcos Productions, the producer of the series, Gaumont Television, the series’ distributor, and Netflix, the U.S. broadcaster.  Specifically, Vallejo claimed that certain scenes in the series were copied from various chapters in her book, including one that describes a sexual encounter between Vallejo and Escobar involving a handgun, and another that recounted a meeting between Escobar, Vallejo and Ivan Marino Ospina, one of the heads of a Colombian guerilla organization.  Vallejo claimed that the infringing scenes from the first season of Narcos were, respectively, a sex scene in episode three between Escobar and a character named Valeria Velez (who was based on Vallejo) involving a gun, and a scene from the fourth episode in which Escobar meets with a man named “Ivan” who is a leader of a Colombian guerilla organization.

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In Arthrex Inc. v. Smith & Nephew Inc. et al., case number 18-2140, the U.S. Court of Appeals for the Federal Circuit recently considered whether the appointment of the Board’s Administrative Patent Judges (“APJs”) by the Secretary of Commerce, as currently set forth in Title 35, violates the Appointments Clause of the U.S. Constitution.  The Federal Circuit held that the statute as currently constructed makes the APJs principal officers.  To remedy the violation, the Federal Circuit concluded that severing the portion of the Patent Act restricting removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem.  As the final written decision on appeal issued while there was an Appointments Clause violation, the appropriate course of action was for this case to be remanded to a new panel of APJs.

As some background, inter partes review is a “‘hybrid proceeding’ with ‘adjudicatory characteristics’ similar to court proceedings.”  After a petitioner files a petition requesting that the Board consider the patentability of issued patent claims, the Director of the United States Patent and Trademark Office (“USPTO”) determines whether to institute an inter partes review proceeding.  A three-judge panel of Board members then conducts the instituted inter partes review.  If an instituted review is not dismissed before the conclusion of the proceedings, the Board issues a final written decision determining the patentability of challenged claims. Once the time for appeal of the decision expires or any appeal has been terminated, the Director issues and publishes a certificate canceling any claim of the patent finally determined to be unpatentable.

Turning to the specific issues, the Federal Circuit first concluded that APJs are principal officers. The Federal Circuit reasoned the lack of any presidentially-appointed officer who can review, vacate, or correct decisions by the APJs combined with the limited removal power lead the Federal Circuit to conclude that these are principal officers. While the Director does exercise oversight authority that guides the APJs procedurally and substantively, and even if he has the authority to de-designate an APJ from inter partes reviews, the control and supervision of the APJs are not sufficient to render them inferior officers. The lack of control over APJ decisions does not allow the President to ensure the laws are faithfully executed because “he cannot oversee the faithfulness of the officers who execute them.” These factors, considered together, confirm that APJs are principal officers under Title 35 as currently constituted, according to the Court. As such, they must be appointed by the President and confirmed by the Senate.  And, because they are not, the Court concluded the current structure of the Board violates the Appointments Clause.  Thus, the Federal Circuit concluded that severing the portion of the Patent Act restricting removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem.

Having determined that the current structure of the Board under Title 35 as constituted is unconstitutional, the Federal Circuit next considered whether there is a remedial approach to address the constitutionality issue in this case.  The Federal Circuit concluded that challenges under these circumstances should be incentivized at the appellate level.  Thus, the Federal Circuit held that a new panel of APJs must be designated on remand and a new hearing granted.  The Federal Circuit reasoned that when a judge has heard the case and issued a decision on the merits, “[h]e cannot be expected to consider the matter as though he had not adjudicated it before. To cure the constitutional error, another ALJ . . . must hold the new hearing.”

However, the Federal Circuit also instructed that “on remand the decision to institute is not suspect; we see no constitutional infirmity in the institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314. Finally, we see no error in the new panel proceeding on the existing written record but leave to the Board’s sound discretion whether it should allow additional briefing or reopen the record in any individual case.”

Finally, the Federal Circuit also specifically noted that it has decided only that this case, where the final decision was rendered by a panel of APJs who were not constitutionally appointed and where the parties presented an Appointments Clause challenge on appeal, must be vacated and remanded. Appointments Clause challenges are “nonjurisdictional structural constitutional objections” that can be waived when not presented. Thus, the Federal Circuit instructed that the impact of this case was limited to those cases where final written decisions were issued and where litigants presented an Appointments Clause challenge on appeal.

Should a company be required to license its patents to a competitor?  That’s one question that arises when intellectual property law and antitrust law intersect.

The Sherman Act, section 1, prohibits concerted action (agreements, combinations, or conspiracies) that restrain trade.  Four types of conduct are per se unlawful; i.e., illegal regardless of the reason.  They all involve agreements between competitors, also called horizontal agreements.  It is per se unlawful to agree with a competitor to fix prices, rig bids, participate in group boycotts, or allocate markets.  Other types of conduct are unlawful under the Rule of Reason; their illegality depends on the conduct in the relevant market (the product market and the geographic market) and whether there is a rational business reason for the conduct.  Examples of unlawful conduct include certain types of exclusive dealing arrangements, some kinds of price discrimination or restrictions on sales, tying arrangements, and some mergers and acquisitions.

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Before 1995, the term of a U.S. utility patent was 17 years from the day the patent issued.  In 1994, the federal statutes were changed to make the patent term 20 years from the effective filing date of the patent application.  This change was part of the Uruguay Round Agreements Act and was intended to make U.S. patents comparable to foreign patents, which, in most countries, expire 20 years from their filing dates.

However, in order to address the problem of delays caused by the Patent and Trademark Office during the prosecution of a patent, Congress enacted statutes providing for the addition of specific numbers of days to a patent’s term.  See 35 U.S.C. section 154(b).

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Many resources are being devoted to preventing data breaches and protecting privacy.  In fact, patents have issued on various approaches.  But are those approaches really patentable?   In a recent challenge to OneTrust’s patent, which is related to data privacy risk, the Patent Trial and Appeal Board (“PTAB”) found the subject matter patent ineligible.

OneTrust’s patent, U.S. Patent No. 9,691,090 (“’090 Patent”), relates to privacy management software that calculates the risk to personal data that has been collected and is being used, for example, by a business.  OneTrust explained its software platform is used by companies to comply with data privacy regulations.

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If you’re familiar with Banksy, you know he’s the epitome of counterculturalism. For those of you who aren’t familiar with Banksy, he is an anonymous England-based street artist, vandal, political activist, and film director who has been active since the 1990s. His satirical street art and subversive epigrams combine graffiti and dark, sometimes morbid, humor. If you have a minute, take a look at his work. He certainly isn’t someone who you would expect to turn to the legal system to protect his intellectual property. In fact, he’s openly stated that “copyright is for losers.”

Nevertheless, it turns out that Banksy would, in fact, turn to the legal system to put a stop to the misappropriation of his work. Banksy recently made a public statement that a greeting card company is misappropriating his intellectual property and attempting to procure a trademark in his name so that they can sell fake Banksy merchandise without fear of legal prosecution. In fact, although the details are a bit unclear, it seems the greeting card company, Full Colour Black, brought the fight to Banksy, seeking to cancel various copyrights and trademarks Banksy holds in the European Union Intellectual Property Office. Banksy believes that Full Colour Black is relying upon Banksy not showing up in court to defend his property, but judging by Banksy’s reaction, that couldn’t be further from the truth.

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