A student-run resource for reliable reports on the latest law and technology news

Federal Circuit Flash Digest

By Kayla Haran – Edited by Ken Winterbottom

Court Finds Negative Claim Limitation Meets Written Description Requirements

International Trade Commission’s Expansion of its Jurisdiction to Include Electronic Transmissions of Digital Data Ruled Improper

Court Holds That Patent Trial and Appeal Board Did Not Deny Procedural Rights in Review



Federal Circuit Flash Digest

By Patrick Gallagher – Edited by Ken Winterbottom

TOR Project Head Alleges FBI Paid Carnegie Mellon for Hack in Connection with Silk Road 2.0 Investigation

DOJ Decides Not to Support FCC in Efforts to Preempt States Laws Limiting Municipal Broadband Projects

D.C. Court of Appeals Permits Continuation of Bulk Domestic Phone Data Collection



Senate passes Cybersecurity Information Sharing Act

By Frederick Ding — Edited by Yunnan Jiang

On October 27, 2015, the Senate passed the Cybersecurity Information Sharing Act (CISA), which enables companies to share cyber threat indicators with each other and the federal government, and immunizes them from liability for sharing under the act. Tech companies and journalists have vocally expressed opposition to the act, which may enable companies to share users’ personal information.



Senators push bill protecting interstate trade secrets amidst concerns over trolling

By Bhargav Srinivasan – Edited by Olga Slobodyanyuk

The Senate Judiciary Committee is deliberating a bill to provide US companies with extra legal protections for trade secrets for products or services used in interstate commerce. However, some legal scholars believe the bill creates strong potential for companies to engage in “trade secret trolling” by falsely accusing rivals of stealing trade secrets in order to stall their business. The ensuing debate now weighs the intent of the bill with the potential for legal bullying.



Federal Circuit Flash Digest

By Keke Wu – Edited by Yunnan Jiang

Federal Circuit Rejects-in-part the District Court’s Claim Construction

No Jurisdiction to Claim Reputational Harm after Settlement

Federal Circuit Affirms-in-part PTAB in Belden vs. Berk-Tek


Google Appeals Ruling that Use of Java APIs in Android Violates Oracle’s Copyrights

By Katherine Kwong– Edited by Ashish Bakshi

Petition for Writ of Certiorari, Google Inc. v. Oracle Am., Inc., No. 14–410 (U.S. October 6, 2014)

Petition hosted by The American Lawyer.

how-to-draw-an-android-android-phone_1_000000008746_5On October 6, Google filed a petition for writ of certiorari with the U.S. Supreme Court, asking the Court to rule on whether copyright protections extend to a software “system or method of operation,” such as an application programming interface (API). Petition for Writ of Certiorari, Google Inc. v. Oracle Am., Inc., No. 14-410 (U.S. October 6, 2014).

Google and Oracle have been embroiled in a legal battle since 2010, when Oracle filed suit alleging that Google’s use of Java method headers and class names in the Android operating system infringed upon Oracle’s copyrights. Oracle Am., Inc. v. Google Inc. 872 F.Supp.2d 974, 975 (N.D. Cal. 2012). Hosted by Casetext.com. Oracle claimed that Google “has replicated the structure, sequence and organization of the overall code” of 37 Java API packages. Id.

The trial court ruled in 2012 that Oracle’s Java API was “a system or method of operation under Section 102(b) of the Copyright Act” that therefore could not be copyrighted.  Id. at 977. The court’s rationale was that the duplicated Java method headers under contention could not be copyrighted because they needed to be duplicated to ensure interoperability. Id. at 976. Java’s class names were likewise ruled ineligible for copyright because “copyright protection never extends to names or short phrases as a matter of law.” Id. (more…)

Posted On Oct - 28 - 2014 Comments Off READ FULL POST

By Ariane Moss

Microsoft Tax Banned in Italy

In a case filed by Marco Pieraccioli against Hewlett Packard, the Italian Supreme Court ruled that Italian residents don’t have to pay for a pre-installed operating system if they don’t want it when purchasing a new computer. Until this decision, users in Italy had to pay for the Windows OS installed on their computer regardless of whether they wanted or intended to use the system. Now Italian residents are entitled to a refund in instances of unwanted pre-installed software. The court’s argument rests on the principle that there are two contracts: one for the purchase of the computer, and one for the use of pre-installed software. While the computer purchase contract is valid, the user licensing agreement for the unwanted software is void.

California Responds to Data Breaches by Strengthening Privacy Laws

California Governor Jerry Brown signed Assembly Bill 1710 into law which expands the requirements for businesses that have suffered data breaches. In light of high profile breaches at Target, Neiman Marcus, Home Depot, for example, the California legislature sought to strengthen privacy laws in efforts to protect consumers whose personally identifiable information was compromised by unintentional information disclosure.  The Bill further requires that any business engaged in maintaining personal information fulfill a reasonable security requirement even if the business does not own or license the data.

EU Court Rules Embedding Is Not Copyright Infringement

The Court of Justice of the European Union ruled that embedding copyrighted videos is not copyright infringement even if the source video was uploaded without permission. This verdict will shield from liability Internet users who embed copyrighted videos from other websites. The rule comes from the German case BestWater International GmbH v. Michael Mebes, Stefan Potsch, where BestWater International sued two employees for embedding one of its promotional videos on the employees’ personal websites without permission. Under European law, embedding a video does not violate the creator’s copyright claims as long as the file is not altered or communicated to a new public.

Posted On Oct - 28 - 2014 Comments Off READ FULL POST

By Olga Slobodyanyuk  Edited by Jesse Goodwin

The UN Report from the Special Rapporteur on Counter-Terrorism and Human Rights found that government Internet mass surveillance violates Article 17 of the International Covenant on Civil and Political Rights (“ICCPR”) by impinging on individuals’ privacy. The report found that mass surveillance programs such as NSA’s Prism and GCHQ’s Temporapose a direct and ongoing challenge to an established norm of international law.”

The entire report can be found here.

Article 17 of the ICCPR states that “no one shall be subjected to arbitrary or unlawful interference with his or her privacy, family, home and correspondence, nor to unlawful attacks on his or her honour and reputation.”

The Special Rapporteur, Ben Emmerson, differentiated between targeted and mass surveillance. Targeted surveillance “depend[s] upon the existence of prior suspicion of the targeted individual or organization,” while mass surveillance allows the “communications of literally every Internet user [to be] potentially open for inspection by intelligence and law enforcement agencies in the States concerned.” The report concluded that mass surveillance “amounts to a systematic interference with the right to respect for the privacy of communications, and requires a correspondingly compelling justification.”

The report stated that the broad justification for mass surveillance—that it can aid counter terrorism violations—is neither reasonable nor lawful. According to Emmerson, “the very essence of the right to the privacy of communication is that infringements must be exceptional, and justified on a case-by-case basis.” (more…)

Posted On Oct - 27 - 2014 Comments Off READ FULL POST

By Asher Lowenstein – Edited by Mengyi Wang

Robert Bosch, LLC, v. Snap-On Inc., 2014-1040 (Fed. Cir. Oct. 14, 2014)

Slip Opinion

The Federal Circuit affirmed a district court decision that patent claims without reference to structure are indefinite under 35 U.S.C. § 112(f). The dispute involved Bosch’s patent—U.S. Patent No. 6,782,313 (“the ’313 patent”)—which claims “a diagnostic tester that determines whether the computerized control unit in a motor vehicle needs to be reprogrammed.” Slip op. at 2Bosch sued Snap-On for infringing the ’313 patent, and Snap-on countered by arguing that the two claim terms “program loading device” and “program recognition device” are means-plus-function terms that fall within the purview § 112 and are indefinite. Id. at 4. The U.S. District Court for the Eastern District of Michigan agreed with Snap-on. Id. On appeal,  while disagreeing with the district court that any use of the word “means” invokes § 112(f), id. at 7, the Federal Circuit affirmed that the patent claims were indefinite. Id. at 12.

In patent applications, it is often easiest to describe an invention as something to be used as a means for a particular function. After the Supreme Court in Halliburton Oil Well Cementing Co. v. Walker found such descriptions invalid, § 112(f) was specifically added to allow these formulations with some limitations. 329 U.S. 1, 9 (1946) hosted by Justia.com. “Congress decided to permit broad means-plus-function language, but provided a standard to make the broad claim language more definite.” Valmont Indus., Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed. Cir. 1993) hosted by scholar.google.com. The limitations are that “[t]he applicant must describe in the patent specification some structure which performs the specified function,” and the court must relate the language to the corresponding structure. Id. (more…)

Posted On Oct - 27 - 2014 Comments Off READ FULL POST

By Steven Wilfong

Multimedia car system patents ruled as unenforceable based on inequitable conduct

The United States Court of Appeals for the Federal Circuit in American Calcar, Inc. v. American Honda Motor Co., 13-1061 (Fed. Cir. September 26, 2014) affirmed the United States District Court for the Southern District of California’s finding that three multimedia car system patents (U.S. Patents #6,330,497, 6,438,465, and 6,542,795) were unenforceable because the defendant had proved inequitable conduct. Calcar at 12. The court applied the two-pronged standard it established in Theranese, which requires a defendant alleging inequitable conduct to demonstrate that a patent applicant “(1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the PTO.” Id. at 5, citing Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d. 1333, 1344 (Fed. Cir. 2013).  The district court found that information withheld during the patent application process would have caused the PTO to reject the claims, id. at 8, and that one of the inventors “possessed undisclosed information, . . . knew it was material, and deliberately decided to withhold [it] from the PTO.”  Id. at 10.  The Federal Circuit held that neither conclusion was clearly in error, and that both the materiality and the intent prongs of the Theranese standard were  thereby satisfied.  Id. at 1112.  Law360 provides an in-depth discussion of the ruling.

ITC’s ruling that uPI violated Consent Order affirmed

The United States Court of Appeals for the Federal Circuit in uPI Semiconductor Corporation v. ITC, 13-1157 (Fed. Cir. September 25, 2014) affirmed the International Trade Commission’s ruling that uPI violated a Consent Order, uPI at 3, and reversed the Commission’s finding that the violation did not extend to “products allegedly developed and produced after entry of the Consent Order,” id. at 5. The Consent Order mandates that uPI will not “knowingly aid, abet or induce importation” of DC current converter products infringing three patents (U.S. Patents #7,315,190, 6,414,470, 7,132,717).  Id. at 4.  Appealing the Commission’s findings, uPI argued that the Consent Order cannot apply to third-party imports absent a general exclusion order, citing Kyocera Wireless Corp. v. International Trade Commission, 545 F.3d 1340 (Fed. Cir. 2008).  Id. at 10.  They also argued that the Commission did not prove that the imports in question did not derive from sales prior to the Consent Order being issued.  Id. at 10-11.  The Federal Circuit found that Kyocera did not necessitate an exclusion order, id. at 13, and that evidence related to upstream sales, downstream sales, and import lag times were sufficient to establish that sales of accused products occurred after the Consent Order issued.  Id.  The Federal Circuit also ruled that the uPI’s evidence of compliance for post-Consent Order products was “grossly inadequate,” and reversed the Commission’s finding that these products were independently developed.  Id. at 19.

Court rules that VeriFone devices did not infringe on payment terminal software patents

The United States Court of Appeals for the Federal Circuit in CardSoft, LLC v. VeriFone, Inc., 14-1135 (Fed. Cir. October 17, 2014), reversed the United States District Court for the Eastern District of Texas’s ruling that VeriFone devices infringed two patents describing payment terminal software (U.S. Patents #6,934,945 and 7,302,683).  CardSoft at 2-3.  The Federal Circuit found that the district court’s construction of the term “virtual machine” as “a computer programmed to emulate a hypothetical computer for applications relating to transport of data” was incomplete, id. at 6, citing Cardsoft, Inc. v. VeriFone Holdings, Inc.,  No. 2:08-cv-98, 2011 WL 4454940, at *8 (E.D. Tex. Sept. 29, 2011), because this definition omits reference to a virtual machine’s “ability to run applications that [do] not depend on any specific underlying operating system or hardware,” id. at 7.  The court described this ability as a virtual machine’s “defining feature.” Id.  The Federal Circuit reversed because of the district court’s construction of the term, id. at 5. Because CardSoft did not address Appellants’ argument of no infringement under an updated construction, the court granted judgment of no infringement as a matter of law.  Id. at 10.  Law360 provides a discussion of the ruling.

Posted On Oct - 21 - 2014 Comments Off READ FULL POST
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