A student-run resource for reliable reports on the latest law and technology news
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On August 14, 2014, the U.S. Food and Drug Administration (FDA) issued Draft Guidelines on the direct de novo classification process, a means of accelerating the approval of new types of medical devices posing only low to moderate health risks.[1]  The FDA created de novo classification in 1997, but after the process failed to achieve its purpose of expediting approval, the FDA introduced an alternative de novo process called “direct” de novo.

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Insuring Patents

By Yaping Zhang – Edited by Jennifer Chung and Ariel Simms

Despite its increasing availability, patent insurance—providing defensive protection against claims of patent infringement and funding offensive actions against patent infringers—continues to be uncommon. This Note aims to provide an overview of the patent insurance landscape.

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Defend Trade Secrets Act of 2016 Seeks to Establish Federal Cause of Action for Trade Secrets Misappropriation

By Suyoung Jang – Edited by Mila Owen

Following the Senate Judiciary Committee’s approval in January of the Defend Trade Secrets Act of 2016, the Committee has released Senate Report 114-220 supporting the bill. The bill seeks to protect trade secret owners by creating a federal cause of action for trade secret misappropriation.

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Federal Circuit Flash Digest

By Evan Tallmadge – Edited by Olga Slobodyanyuk

The Linked Inheritability Between Two Regions of DNA is an Unpatentable Law of Nature

HP Setback in Challenging the Validity of MPHJ’s Distributed Virtual Copying Patent

CardPool Fails to Escape an Invalidity Judgment But Can Still Pursue Amended Claims

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Amicus Brief by EFF and ACLU Urging Illinois State Sex Offender Laws Declared Unconstitutional under First Amendment

By Yaping Zhang – Edited by Mila Owen

With the Illinois Supreme Court gearing up to determine the constitutionality of the state’s sex offender registration statute, two advocacy non-profits have filed amicus briefs in support of striking the law down.

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Icon-newsBy Patrick Gutierrez

Senate passes bill to make cell phone unlocking legal

The U.S. Senate has unanimously voted to legalize the unlocking of cell phones, passing a bill that will now allow consumers to more easily move from one wireless carrier to another. The Unlocking Consumer Choice and Wireless Competition Act not only permits consumers to unlock their cell phones without risking criminal or civil penalties, but also urges the Librarian of Congress to “consider whether other wireless devices, like tablets, should be eligible for unlocking.” Judiciary Committee Chairman Patrick Leahy, the author of the bill, states that the Act will “promote[] competition in the wireless phone marketplace” by allowing consumers to “use their existing cell phones on the wireless carrier of their choice.” Joe Mullin of Ars Technica provides further background information on the legal history of cellphone unlocking.

ABA urges lawyers to stop pursuing file sharing lawsuits

In an exhaustive 133-page white paper released by the American Bar Association entitled A Call For Action in Online Piracy and Counterfeiting Legislation, the ABA has discouraged its more than 400,000 members from lodging lawsuits against those who engage in illegal online file sharing. The authors explain that “while it is technically possible for trademark and copyright owners to proceed with civil litigation against the consuming public who . . . engage in illegal file sharing, campaigns like this have been expensive, do not yield significant financial returns, and can cause a public relations problem for the plaintiff.” The ABA makes sure to point out the Recording Industry Association of America and the Motion Picture Association of America’s previously futile litigation campaigns against illegal file sharing. Eric Blattberg of VentureBeat notes that, as an alternative to legal action, the ABA proposes the “content industry spend its time educating the public on the negative impact of stealing content, like damage to the U.S. economy.”

FBI cautions that driverless cars may be used to assist criminal behavior

The Guardian has obtained an internal report from the Federal Bureau of Investigation that details some of the agency’s concerns with autonomous cars. The report, written by agents in the Strategic Issues Group within the FBI’s Directorate of Intelligence, states that “bad actors will be able to conduct tasks that require use of both hands,” such as firing a weapon at pursuant law enforcement as the car drives him or her away, or “taking one’s eyes off the road.” The report also discusses the possibility that driverless car technology may be used for “dual-use applications” or as “more of a potential lethal weapon.” This presumably reflects worries that hackers could access the cars’ systems remotely, or, as the Guardian notes, that “terrorists might program explosive-packed cars to become self-driving bombs.” Josh Wolford of WebProNews provides commentary.

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

Icon-newsBy Amanda Liverzani

Dismissal of Trademark Registration Opposition Affirmed Despite Pronunciation Error

In StonCor Group, Inc. v. Specialty Coatings, Inc., No. 13-1448 (Fed. Cir. July 16, 2014), slip op. at 1, the United States Court of Appeals for the Federal Circuit affirmed the United States Patent and Trademark Office Trademark Trial and Appeal Board’s (“Board”) dismissal of StonCor’s opposition to the registration of a trademark by Specialty Coatings. StonCor previously registered the mark STONSHIELD for use in relation to epoxy coatings for concrete floors. Id. at 2. Specialty Coatings subsequently applied to register the mark ARMORSTONE, also for use with epoxy coatings. Id. StonCor opposed Specialty Coatings’ registration based on the likelihood of confusion between STONSHIELD and ARMORSTONE and because ARMORSTONE was merely descriptive of the epoxy products. Id. at 3. The Federal Circuit found that while the Board erred regarding the pronunciation of STONSHIELD, the error did not impact the legal merit of the Board’s decision. Id. at 7. John L. Welch of the Los Angeles Intellectual Property Law Association provides additional analysis of the decision.

Non-Infringement of Cellular Network Patents Affirmed

The United States Court of Appeals for the Federal Circuit affirmed the United States District Court for the District of Delaware’s decision that Apple did not infringe cellular network patents held by Golden Bridge Technology in Golden Bridge Technology, Inc. v. Apple Inc., No. 13-1496 (Fed. Cir. July 14, 2014), slip op. at 2. Golden Bridge Technology filed suit against Apple alleging that Apple had infringed upon two patents, U.S. Patent Nos. 6,574,267 and 7,359,427, both of which described improvements to communications between mobile and base stations for a Code Multiple Access wireless cellular network. Id. The Federal Circuit found that the district court did not err in using the claim construction of “preamble” from a previous Golden Bridge Technology patent litigation. Id. at 5-6. For further commentary, see Law360 and Bloomberg BNA.

Federal Circuit Finds it Lacks Subject-Matter Appellate Jurisdiction Over Patent Infringement Case

In U.S. Water Services, Inc. v. ChemTreat, Inc., No. 13-1236 (Fed. Cir. July 8, 2014), slip op. at 1-2, the United States Court of Appeals for the Federal Circuit found that it lacked subject-matter appellate jurisdiction over a patent infringement appeal from the Minnesota District Court and transferred the case to the Eighth Circuit. U.S. Water Services brought suit against ChemTreat alleging misappropriation of trade secrets in violation of Minnesota law. Id. at 2. After the initial complaint was filed, the Patent and Trademark Office issued a patent covering technology related to the allegedly misappropriated trade secrets to U.S. Water Services (U.S. Patent No. 8,039,244), and ChemTreat amended its answer to include counterclaims for declaratory judgment of noninfringement and invalidity. The district court dismissed the trade secret misappropriation claims and granted ChemTreat’s motion for summary judgment of non-infringement. Id. U.S. Water Services subsequently appealed to the Federal Circuit. The Federal Circuit found that it did not have subject-matter jurisdiction under 28 U.S.C. § 1338(a) because, applying the well-pleaded complaint rule, the action did not arise under federal patent law. Id. at 3-4. See PatentlyO for more discussion of the Federal Circuit’s jurisdiction analysis.

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

By Mengyi Wang – Edited by Suzanne Van Arsdale

X2Y Attenuators, LLC v. Int’l Trade Comm’n, No. 2013-1340 (Fed. Cir. July 7, 2014)

Slip Opinion

The United States Court of Appeals for the Federal Circuit unanimously affirmed a decision of the International Trade Commission (“ITC”), which had held that Intel Corporation and other intervenors (“Intel”) did not violate 19 U.S.C. § 1337, because patents held by X2Y Attenuators, LLC (“X2Y”) did not cover their products. X2Y Attenuators, LLC v. Int’l Trade Comm’n, slip op. at 2. While the language of the claims encompassed the accused products, the Federal Circuit affirmed the ITC’s narrow claim construction based on specification disavowal.

The dispute involved three of X2Y’s  patents—U.S. Patents No. 7,609,500 (“the ’500 patent”), No. 7,916,444 (“the ’444 patent”), and No. 8,023,241 (“the ’241 patent”)—which relate to structures for reducing electromagnetic interference in electrical circuits. Id. at 2–3. X2Y initially filed a complaint with the ITC, alleging that Intel had illegally imported certain microprocessor products in violation of 19 U.S.C. § 1337. Id. at 5. The dispute centered on the construction of the electrode terms. While the patents disclose alternating arrangements of shielded and shielding electrodes, they do not specify their relative configuration. Id. at 3, 5. The ITC construed the claims narrowly to require the “sandwich” configuration, asan arrangement of three electrodes in which a center conductor is flanked by paired differential, or oppositely charged, conductors.” Id. at 5–6. X2Y conceded non-infringement according to the ITC’s claim construction and appealed the determination. Id. at 6.

On appeal, the Federal Circuit endorsed ITC’s construction of the electrode terms based upon specification disavowal. Citing GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014) and Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002), the court explained that the patents’ specification referring to the sandwich configuration as an “essential element among all embodiments or connotations of the invention” and“universal to all the embodiments” plainly indicates an intention to limit the claim scope. Id. at 7–8. This intention was buttressed by the passage stating that the general sandwich configuration stays the same regardless of change of material. Id. at 8. Accordingly, the exacting standard of finding disavowal was met. Id. at 8.

X2Y further contended that the disclaimers appearing only in priority patents were inapplicable to asserted patents related to them only as continuations-in-part. However, the court rejected that argument, noting that, not only does the ’500 patent explicitly contain the “essential element” label, but the ’500 and ’444 patents also incorporate, by reference, priority patents that include the “feature universal” and “essential element” disavowals. Id. at 8–9. Since the disclaimers of the incorporated patents become part of the asserted patents, and the context of the disclosure of the host patent is insufficient to rebut the disclaimers, the court found that ITC has correctly construed the electrode terms. Id. at 9–10.

Judge Reyna joined the court’s opinion in its entirety but wrote a concurrence, stating that the administrative law judge and the ITC reached the correct construction through an erroneous path by failing to “objectively construe the asserted claims before deciding whether the claims were entitled to priority.” Id. at 12 (Reyna, J., concurring).

Patently-O notes that the decision unfortunately reinforces the current patent drafting norm that decreases the disclosure value of a patent: no elements are disclosed as “necessary, critical, preferred, or even discouraged” so that patentees can conceal their inventions’ true characteristics to minimize their susceptibility to narrow constructions of claims. 

 

Posted On Jul - 15 - 2014 Comments Off READ FULL POST

Icon-newsBy Kellen Wittkop

Dismissal of Suit for Violation of False Marketing Affirmed Due to Lack of Standing after Elimination of qui tam Provision

The United States Court of Appeals for the Federal Circuit in Stauffer v. Brooks Brothers Group, Inc., 13-1180 (Fed. Cir. July 10, 2014) affirmed the United States District Court for the Southern District of New York’s decision to dismiss the suit for lack of standing, holding that after elimination of the qui tam provision of the false-marketing statute by the America Invents Act (“AIA”), the pro se plaintiff-appellant no longer had standing in the pending litigation.  Stauffer at 14.  The AIA “made three significant changes to the false-marketing statute that affected Mr. Stauffer’s claim,” the most influential of which was the elimination of the statute’s qui tam provision making it so that “only a ‘person who has suffered a competitive injury’ may bring a claim.”  Id. at 3 (citing AIA § 16(b)(2)).  Mr. Stauffer argued that, first, the retroactive application of the AIA amendments constituted a mass pardon which Congress could not grant, and, second, that the retroactive amendments violated the common-law principle of prohibiting use of a pardon to negate theaction once it has begun, id. at 7, but the Federal Circuit disagreed on both points, id. at 11–12.  Milbank provides an in-depth discussion of the case.

Summary Judgment Affirmed for Subject Matter Ineligibility of Claims for Infringement of “Device Profile” Generation and Use

The United States Court of Appeals for the Federal Circuit in Digitech Technologies v. Electronics for Imaging, Inc., 13-1600 (Fed. Cir. July 11, 2014) affirmed the United States District Court for the Central District of California’s grant of summary judgment to several defendants, concluding that the device profile in the ’415 patent does not fall within any category of eligible subject matter.  Digitech Technologies at 7.  The patent at issue (U.S. Patent #6,128,415) covers “the generation and use of an ‘improved device profile’ that describes spatial and color properties of a devise within a digital image processing system.”  Id. at 5.  Consistent with the findings of the District Court, the Federal Circuit held that under 35 U.S.C. § 101, a device profile did not fall within any eligible categories of subject matter because it was not tangible or physical.  Id. at 7.  Additionally, the Federal Circuit applied the recent Supreme Court ruling in Alice Corp. v. CLS Bank Int’l, 573 U.S. ___, No. 13-298 (June 19, 2014), which concluded that fundamental concepts are by themselves ineligible abstract ideas. Id. at 10.  Law360 provides coverage of the case.

Posted On Jul - 15 - 2014 Comments Off READ FULL POST

Icon-newsBy Olga Slobodyanyuk

BP Fails to Trademark the Color Green in Australia

British Petroleum (“BP”) lost its 22-year-old legal battle in Australia to trademark the dark green shade that dominates its logo, reports The Guardian. The governmental agency that administers intellectual property rights, IP Australia, found that BP did not show “convincing evidence” that the fuel company was linked in consumers’ minds with the green shade known as Pantone 348C. According to Corporate Council, despite the failure in Australia, BP has trademarked the color in the UK and Europe, and has protected its use in marketing fuel and service stations in the U.S.

The FTC Sues Amazon over Children’s Purchases in Apps

The Federal Trade Commission (FTC) filed a lawsuit against Amazon.com, alleging that the online retailer allowed children to make purchases within apps and online games without their parents’ permission, reports Forbes. The FTC is seeking refunds for consumers for all such purchases, as well as changes to Amazon’s in-app commerce policies, according to The Washington Post. In a public letter to the FTC, Amazon responded that it has consistently improved it’s in-app buying services and has been promptly responding to customer concerns. Forbes reports that Amazon keeps 30% of in-app purchase revenue and keeps all sales final and non-refundable. FTC has investigated similar problems with Apple and had a multimillion dollar settlement with the company earlier this year.

Leaked Code Reveals that NSA is Targeting Users of Privacy Services

An analysis of leaked code used to conduct internet surveillance reveals that users who visit privacy and anonymity websites are targeted by the NSA, reports the Electronic Frontier Foundation (EFF). The code, a tool called Xkeyscore, “fingerprints,” or marks for further investigation, users who access privacy services such as Tor, Tails, HotSpotShield, FreeNet, Centurian, and Linux Journal, a monthly magazine about the open-source operating system (which the NSA labeled as an “extremist forum” for advocating for privacy services use), reports Wired. Privacy services are used by journals, human rights advocates, and political dissidents, among others. According to the general deputy council of the EFF, visiting privacy websites and reading Linux Journal are protected First Amendment activities, essential to freedom of expression, which cannot be targeted under the Foreign Intelligence Surveillance Act.

Posted On Jul - 15 - 2014 Comments Off READ FULL POST
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