By Alex Shank – Edited by Michael Hoven
Editorial Policy

Photo By: Dan4th Nicholas – CC BY 2.0

The Leahy-Smith America Invents Act (“AIA”) introduced substantial changes to the U.S. patent system, among them the transition to the first-inventor-to-file priority system. Parties whose patent applications have been rejected by a PTO examiner and the newly formed Patent Trial and Appeals Board (“PTAB”) also have a new venue in which to appeal their rejections—the District Court of the Eastern District of Virginia (“EDVA”). Patent litigators, enticed by the “Rocket Docket” EDVA and its recently relaxed evidentiary standards, may spur a spike in granted patents, compounding the defects of already over-patented system. However, other AIA reforms, including expanded post-grant review and the opening of PTO satellite offices, as well as PTO appeals of EDVA decisions, will likely temper the spike. Ultimately, opening the EDVA may figure most prominently in heightening the scrutiny of potentially cursory PTO examiner decisions.

As described by Damon W. D. Wright and Matthew R. Farley at IPFrontline, the availability of the EDVA may inspire prospective patentees to refrain from bringing appeals directly to the Court of Appeals for the Federal Circuit (“CAFC”) and instead to seek review in the EDVA. Prior to the enactment of the AIA, parties seeking review of patents rejected by the PTO could bring a civil suit to obtain a patent—commonly called a “Section 145 action”—but only in the District Court of the District of Columbia. Most applicants avoided the relatively sluggish DC District Court and appealed directly to the CAFC. The “Rocket Docket” EDVA’s reputation for efficiently processing suits may reverse this practice. As Wright and Farley note, the Supreme Court’s 2012 ruling in Kappos v. Hyatt, 132 S.Ct. 1690 (2012), further enhances the appeal of a Section 145 action. In Kappos, the Supreme Court held that district courts hearing patent appeals can admit new evidence, bound only by the standards published in the Federal Rules of Evidence and Civil Procedure, and, if new evidence is admitted, the court must apply a de novo standard of review to both new and previously admitted evidence. In contrast, the CAFC examines only the evidence contained in the PTO record and does so with a deferential standard of review. (more…)

By Michelle Sohn

Northern District of California Court Strikes Down National Security Letter Statute

On Friday, the District Court for the Northern District of California struck down 18 U.S.C. § 2709 due to its failure to meet First Amendment standards, reports the Electronic Frontier Foundation (“EFF”). The statute is known as one of the “National Security Letter” (“NSL”) statutes, which allows the FBI to issue requests for subscriber information from Internet service providers, telephone companies, and others. The ruling was a response to the EFF’s 2011 petition challenging the constitutionality of the 2709(c) “gag” provision, which prohibits companies from disclosing that they have received an NSL as well as the judicial review provisions of 18 U.S.C. § 3511 (b). District Court Judge Susan Illston’s decision to bar NSLs differs from a prior ruling on the issue from the Second Circuit. The Second Circuit, in Doe v. Mukasey, approved NSLs as long as the FBI took voluntary measures to protect against abuse. Unlike the Second Circuit, Judge Illston’s decision held that since the gag provision was meant to work in concert with the rest of the statute, the power granted to the FBI to compel subscriber information from providers also be struck down. The District Court’s decision is likely to be appealed to the Ninth Circuit Court of Appeals.

Social Media Added Fuel to the Fire in Stuebenville Rape Case

Two Ohio high school football players accused of raping a 16-year old girl were convicted Sunday, reports USA Today. The case was largely driven by and followed in social media. Throughout the trial, texts and videos from Twitter, Instagram, and Facebook were used to incriminate the accused. The episode even got the attention of hacktivist group, Anonymous, which made public a private video of students joking about the incident. On Monday, two Ohio girls were arrested after making threats against the victim on Facebook and Twitter.

Presidential Commission Concludes Anthrax Vaccine Testing on Children Unethical without Further Research

The Presidential Commission for the Study of Bioethical Issues released a report Tuesday warning against a government proposal to test anthrax vaccines on children without conducting more preliminary research, NPR reports.  The proposal for testing is rooted in two major concerns: first, the likelihood that anthrax would be the weapon of choice in a bioterrorist attack, and second, the uncertainty that the vaccine would work effectively in children. To date, the anthrax vaccine has been given to more than one million adults in the military, but the vaccine’s effects on children are not known. The Commission’s report concluded that more research would have to show that testing would pose no more than a minimal risk to children. The report also suggests testing on animals and young adults first. The Department of Health and Human Services, the agency that charged the Commission with evaluating the proposal, will have the final say in whether to go ahead with the experiment.

Radio Systems Corp. v. Lalor
By Craig Fratrik – Edited by Kathleen McGuinness

Radio Systems Corp. v. Lalor, No. 2012-1233, 2013 WL 811757 (Fed. Cir. Mar. 6, 2013)
Slip opinion

Photo By: Rebecca Siegel – CC BY 2.0

The Court of Appeals for the Federal Circuit affirmed in part, reversed in part, and remanded the decision of the Western District of Washington, which had ruled that Tom Lalor and Bumper Boy (“Bumper Boy”) were barred under equitable estoppel from bringing certain patent infringement claims and that none of Radio Systems’ other designs were infringing.

Agreeing with the lower court, the Federal Circuit held that Bumper Boy’s four years of silence after sending a letter claiming infringement prevented them from bringing claims based on the patent referred to in the letter. However, in a divided opinion, the court reversed the lower courts and held that equitable estoppel would not apply to a continuation-in-part patent that Bumper Boy received after it sent its initial letter.

Writing for the Law Technology & Arts Blog, Aaron Orheim provides a good overview of the case. At Patently-O, Dennis Crouch considers how the decision might have changed with different facts and how patentees might change their behavior. (more…)

SOFA Entm’t, Inc. v. Dodger Prods., Inc.
By Erica Larson – Edited by Alex Shank

SOFA Entm’t, Inc. v. Dodger Prods., Inc. No. 2:08-cv-02616 (9th Cir. Mar. 11, 2013)
Slip Opinion

Photo By: bagaball – CC BY 2.0

The Ninth Circuit affirmed the decision of the District Court for the Central District of California to grant summary judgment and award attorneys’ fees to Dodger Productions, Inc. (“Dodger”) in its suit against SOFA Entertainment, Inc. (“SOFA”).

In an opinion by Judge Trott, the court concluded that Dodger’s unlicensed use of a clip from the Ed Sullivan Show fell squarely within the fair use exception. In so holding, the court stated that the use was transformative and the clip used was not at the core of the copyrighted work. In addition, the court awarded attorneys’ fees to Dodger, on the grounds that SOFA should have known that it had little chance of success.

Dan Levine, writing for Thomson Reuters, offers a concise overview of the case. All Media Law provides a more detailed discussion. In her blog, Rebecca Tushnet focuses on the court’s use of fees to send a message about the purposes of copyright. (more…)

By Samantha Rothberg

Reuters Employee Indicted for Conspiring with Anonymous to Hack News Site

A federal grand jury indicted Reuters’ deputy social media editor Matthew Keys for allegedly conspiring with the hacking group Anonymous, Reuters reports. The indictment claims that in 2010, shortly after being fired from his job with a Sacramento television station owned by the Tribune Company, Keys gave Anonymous members a username and password linked to the company’s server. A hacker nicknamed “Sharpie” then used the log-in credentials to hack the Los Angeles Times website, changing the text and headline of a news story. Keys has been charged with three criminal counts, including conspiracy to cause damage to a protected computer, and faces a maximum sentence of up to 25 years in prison and up to $750,000 in fines.

Federal Judge Allows FTC to Serve International Defendants via Facebook

A U.S. District Judge granted the FTC’s request to serve documents via email and Facebook to defendants in India who are accused of scamming U.S. consumers, reports Evan Brown at internetcases. In his opinion granting the request, Judge Paul Engelmayer noted that service by email and Facebook is not prohibited by international agreement. Furthermore, Judge Engelmayer found that service by email and Facebook comports with due process requirements in this case because it is “reasonably calculated” to provide the defendants with notice, particularly given evidence showing that the Facebook and email accounts in question are actually owned and used by the defendants. While Judge Engelmayer noted that courts must be open to the possibility of “service via technological means of then-recent vintage,” he also expressed skepticism that service via Facebook alone would be sufficient to meet due process requirements.

D.C. Circuit Reinstates ACLU Lawsuit Seeking Information on CIA’s Role in Drone Strikes

The U.S. Court of Appeals for the District of Columbia reinstated an American Civil Liberties Union lawsuit seeking CIA documents relating to the agency’s drone program, Bloomberg reports. The ACLU filed a Freedom of Information Act request in 2010 for records disclosing the legal basis for the use of drones to kill civilians abroad, and the CIA argued that to confirm or deny the existence of the drone program would pose a threat to national security. A district court accepted the CIA’s reasoning and dismissed the case in 2011, but the appeals court rejected their argument and sent the case back to the district court for further proceedings. The court ruled that since the drone targeting program had been publicly acknowledged by senior administration officials, including President Barack Obama, former Defense Secretary Leon Panetta, and current CIA Director John Brennan, the agency had waived its right to withhold the information.

Google Settles Street View Lawsuit, Acknowledges Privacy Violations

Google has settled a lawsuit brought by 38 states regarding privacy violations by its Street View team, reports the New York Times. Google acknowledged that its Street View mapping vehicles violated people’s privacy by secretly collecting personal information from millions of unprotected wireless networks across the country. The settlement requires Google to pay a modest $7 million fine and meet several specific privacy benchmarks, including setting up a privacy program within six months, offering privacy certification and training programs for its employees, and launching a comprehensive effort via YouTube, online ads, and newspaper ads to educate consumers about easy ways to encrypt their wireless networks.