Latest IP Need to Know: Patent Eligibility, Nutella, Texas Trade Secrets Act, Trademark Scams, More

What’s new in intellectual property law? Plenty: patent eligibility of computer-related inventions, a uniform trade secrets act in Texas, new discovery rules for 337 investigations, trademark scams, and a whole lot more. Even Lady Gaga…

First, our featured update: a sweet love story with an important message for those who might consider a trademark infringement cease-and-desist letter…

“Back in 2007, Sarah Rosso (Nutella Fan) established World Nutella Day to celebrate her affection for Nutella. Within the past week, she announced on her World Nutella Day Facebook page, Twitter feed and blog that she received the dreaded cease-and-desist letter from the product’s maker, Ferrero S.p.A. Those bastards! Although she did not post the letter, Nutella Fan went to her followers and indicated that she would be shuttering the website, the Facebook page and the Twitter feed as a result of the letter. By sending the cease-and-desist letter to a fan who has a significant public voice amongst other fans and essentially silence from Ferrero, the Nutella Fan drove the narrative of this story…

Happily for all parties, in the interim Ferrero and the Nutella Fan apparently reached an agreement so that she did not have to shut down these sites and could continue to promote her love for the product. Ferraro also issued a generally glowing statement, which the Nutella Fan reposted on her blog.” (Nutty News: Dear Biggest Fan, Here’s a Cease-and-Desist Letter – Winthrop & Weinstine, P.A.)

The best of the rest:

Terror Tactics: Report Urges Government To Use Financial, Immigration, Trade And Immigration Systems To Squeeze Theft Of IP (Orrick):

“A new report on halting the theft of trade secrets and other intellectual property reads like a blueprint for fighting terrorism­—not surprising, given that it was co-authored by the nation’s former spy chief and a member of the 9/11 Commission. On Wednesday, the Commission on the Theft of American Intellectual Property released its report detailing the scale and scope of the problem.” Read on>>

Texas Enacts Uniform Trade Secrets Act (Morgan Lewis):

“On May 2, Texas Governor Rick Perry signed the Texas Uniform Trade Secrets Act (Texas UTSA) into law. The purpose of the act is to provide uniformity with other states in the protection of trade secrets, with Texas joining the overwhelming majority of states in adopting a version of the model Uniform Trade Secrets Act (model UTSA). Although Texas courts often cited the model UTSA in trade secret cases, Texas had not expressly adopted it. As a result, whether a particular category of information would be classified as ‘trade secrets’ was difficult to predict and often turned on the facts of a particular case.” Read on>>

The Wide World of Trademarks (Gray Plant Mooty):

“I ran across the 2012 State of Trademark Report from Thomson CompuMark and got caught up in the reports and statistics of the World Intellectual Property Organization (WIPO). The Thomson report includes 2012 information covering 186 countries and registrars, and the WIPO reports are based on survey results from approximately 150 national and regional IP offices around the world regarding IP activity, including trademarks.” Read on>>

United States International Trade Commission Amends Rules Concerning Discovery in Section 337 Investigations (Wilson Sonsini Goodrich & Rosati):

“The United States International Trade Commission (ITC) on May 15, 2013, issued a notice amending Rule 210.27 of its Rules of Practice and Procedure in Section 337 investigations. The amendments go a long way in attempting to reduce expensive, inefficient, unjustified, or unnecessary discovery practices while preserving the opportunity for fair and efficient discovery. The final rule goes into effect 30 days from publication in the Federal Register, which is expected to occur very shortly.” Read on>>

An Unreasonable Royalty Rate is No Gaming Matter (Sheppard Mullin Richter & Hampton LLP):

“The Honorable Judge James L. Robart recently took on the challenging task of determining a reasonable and non-discriminatory (‘RAND’) royalty rate for Motorola’s standards-essential patents (‘SEP’). […] This decision comes after a two-year patent war between Microsoft and Motorola. In November 2010, Microsoft filed a breach of contract suit, alleging Motorola breached its obligation to license its SEP at a RAND rate.” Read on>>

District Court Judge Enjoins Standards-Essential Patent Owner From Enforcing ITC Exclusion Order (Orrick, Herrington & Sutcliffe LLP):

“In a growing body of legal authority regarding standards-essential patents (SEPs), Northern District of California Judge Ronald Whyte ruled Monday that an owner of SEPs violated its licensing commitments by initiating a U.S. International Trade Commission (ITC) Section 337 action without first offering a reasonable and non-discriminatory (RAND) license. Judge Whyte further granted a preliminary injunction preventing the SEP owner from enforcing any relief it may obtain in the pending ITC investigation.” Read on>>

TM Owners Beware: Potential IP Scammers Are In Our Midst (Burns & Levinson LLP):

“There are few things more annoying than the feeling that you have been duped into paying for something that you neither need nor want. IP owners, and particularly trademark owners, are common targets for scammers seeking to obtain fees for bogus, unnecessary or questionable services offered at outrageous prices. No doubt these scams work because people are busy – but the notices also are steeped in what looks like official language, may appear to come from official governmental auspices, and seem to suggest that the fees cover ‘renewal,’ ‘registration’ or ‘publication.’” Read on>>

Copyright Law Reform Engages Both Courts and Congress (Foley Hoag LLP):

“Big changes may be afoot in copyright law these days, via both litigation and legislation. Courts are considering sweeping infringement claims with potentially far-reaching implications, and Congress is beginning the process of a massive overhaul of copyright statutes.” Read on>>

Laches, Acquiescence, and Trademark Injunctions – Who Should Be Upstream Without a (Greek) Paddle? (Mintz Levin):

“On May 8, a long time manufacturer of ceremonial paddles marketed to fraternities and sororities filed a petition for certiorari with the US Supreme Court seeking relief from an injunction barring him from using Greek organizations’ trademarks in his advertising. […] The lower courts applied the legal doctrines of laches and acquiescence to find that the Greeks waited much too long to assert their rights and, as a result, could not collect damages for trademark infringement. However, they did allow a permanent injunction against future advertising by the Company using the Greek organizations’ trademarks.” Read on>>

YouTube (Part III) Notice-and-Take-Down Safe Harbour Under the DMCA (Bennett Jones LLP):

“A driving force for the development of the Internet was to provide certainty for Internet service organizations on the liability exposure they may have for acts of third parties on their Internet sites. Given that many Canadian Internet web sites do receive U.S. visitors and many also utilize a DMCA safe-harbour provision, understanding the scope of protection that the safe harbour provides can be important to Canadians. The ongoing legal saga in Viacom International Inc., et al. v. YouTube, Inc., YouTube, LLC, and Google, Inc., illuminates the scope of the DMCA safe harbour.” Read on>>

Q&A With Morrison & Foerster’s Deanne Maynard (Morrison & Foerster LLP):

“Deanne E. Maynard is a partner in Morrison & Foerster LLP’s Washington, D.C., office. She chairs the firm’s appellate and U.S. Supreme Court practice group and is a former assistant to the solicitor general at the United States Department of Justice. She has argued 13 cases before the Supreme Court of the United States, and filed more than 100 briefs in that court. Maynard has also argued and briefed many significant cases in the federal courts of appeals, running the gamut from patent appeals in the Federal Circuit to appeals in the other federal courts of appeals on antitrust, securities law and other intellectual property issues.” Read on>>

The Curious Case Of Human Gene Patents (Pepper Hamilton LLP):

“The U.S. Supreme Court heard oral arguments last month in the matter of Association for Molecular Pathology v. Myriad Genetics, a curious case that does not bode well for America’s biotechnology industry and could overturn 30 years of U.S. patent policy. This case has been orchestrated by the American Civil Liberties Union (ACLU), representing a coalition of public interest petitioners. Ostensibly, the ACLU wants to drive down the cost of health care in the United States by eliminating patent protection for so-called ‘gene patents’ held by Myriad Genetics. The ACLU would like us to believe that gene patents are fundamentally wrong – and that they are blocking the development of personalized medicine.” Read on>>

CLS Bank v. Alice Corp. Leaves Rules for Patent-Eligibility of Computer-Implemented Inventions Unclear (Armstrong Teasdale LLP):

“The Court of Appeals for the Federal Circuit issued a ruling on May 10 that may limit the subject matter eligibility of patent claims involving computer-implemented inventions. While legal practitioners had hoped this case, CLS Bank v. Alice Corp, would resolve crucial questions regarding the eligibility of patent claims in computer-implemented inventions, the Court was deeply divided in its opinion and was unable to provide clear guidance. As a result, the intellectual property community still awaits resolution of these issues.” Read on>>

CLS Bank Int’l v. Alice Corp. (Fed. Cir. 2013) (en banc) — Chief Judge Rader’s Concurrence-in-part and Dissent-in-part (McDonnell Boehnen Hulbert & Berghoff LLP):

“A previous post presented the background of this case, as well as Judge Lourie’s plurality concurrence. As noted in that post, Alice’s claimed inventions involved the reduction of settlement risk using a third-party intermediary. Despite the claims being of various statutory classes, including process, article of manufacture, and machine, Judge Lourie found that they were all directed to patent-ineligible abstract ideas, and thus they failed to meet the requirements of 35 U.S.C. § 101.” Read on>>

More on CLS Bank v. Alice Corp>>

A Patent Landscape Analysis: iPSCs (Foley & Lardner LLP):

“There are several emerging technology clusters in the induced pluripotent stem cell (iPSC) space. Simon Elliot and I conducted a patent landscape analysis focusing on issued U.S. patents and pending applications. We found several geographical clusters and a trend in the development of the technology away from the use of genetic transforming factors.” Read on>>

All of These Things Are Not Like the Others; Class Certification Denied in YouTube Case (BakerHostetler):

“When the judge deciding a motion for class certification begins his Opinion by describing the proposed class as a ‘Frankenstein monster,’ you don’t need to be very prescient to predict the outcome of the motion. In The Football Association Premier League Limited v. YouTube, Inc., Judge Louis Stanton refused to certify a class of plaintiffs pursuing copyright infringement claims against YouTube and its parent company, Google, primarily on the grounds that the claims are highly individualized and the proposed class would be unmanageable.” Read on>>

USPTO Launches New After Final Consideration Pilot Program to Reduce Requests for Continued Examination (RCEs) (Foley & Lardner LLP):

“In a Federal Register Notice published on May 17, 2013, the USPTO announced After Final Consideration Pilot Program 2.0 as part of its ongoing efforts to ‘reduce pendency by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application.’ The program is set to commence May 19, 2013 (yesterday!), and will run through September 30, 2013.” Read on>>

Changes in the Rules for ITC Section 337 Investigations Are Now In Effect (McDonnell Boehnen Hulbert & Berghoff LLP):

“On May 20, 2013, new rules of practice and procedure go into effect for International Trade Commission Section 337 Investigations, 19 C.F.R. Parts 201 and 210.1 Many of these rule changes were made for the purposes of making technical corrections or clarifications to the rules and will have little direct impact upon a complainant or respondent’s strategy in navigating through a Section 337 Investigation.” Read on>>

DOJ Issues Rare Unfavorable Business Review Letter Regarding Patent Licensing Pools (Perkins Coie):

“On March 26, 2013, the U.S. Department of Justice (DOJ) issued a rare negative business review letter declining to approve a plan by Intellectual Property Exchange International Inc. (IPXI) to offer a financial exchange for licensing and trading intellectual property rights. Although highlighting many potential benefits to the proposed exchange, the letter ultimately advised that DOJ was ‘withhold[ing] judgment at this time and decline[d] to state its enforcement intentions” due to the “inherent uncertainties and potential competitive concerns associated with IPXI’s novel business model.’” Read on>>

The Second Circuit’s Aereo Math: One Copy + One Subscriber ≠ Public Performance (Morrison & Foerster):

“Last week­—the week of May 12, 2013­—proved to be an eventful week for Aereo. On May 14, 2013, the controversial broadcast television streaming service filed a motion for summary judgment in the Southern District of New York on copyright claims brought by broadcast television networks (including ABC, NBC, CBS and Fox) that Aereo’s service directly infringes the networks’ public performance rights and directly and secondarily infringes their reproduction rights.” Read on>>

I Thought We Broke Up Years Ago! Why You Should “Throw Out” Trade Secrets As Soon As A Business Relationship Ends (Orrick):

“The Fifth Circuit’s affirmance last week of a $44.4 million trade secrets award in the Wellogix v. Accenture case is a weighty reminder of the power of circumstantial evidence in trade secrets cases, and the importance of getting rid of your collaborator’s trade secrets after a co-development or joint venture project ends.” Read on>>

The Issues of Trademark Infringement and Dilution Go “Wild” (Mintz Levin):

“Those of us in a certain age bracket will remember Mutual of Omaha’s “Wild Kingdom” television program that first began in 1963. The Emmy Award-winning show’s first run ended in 1986, and the show went into production again in 2002 for broadcast on the Animal Planet network. The show is about wildlife, and focuses on a variety of subjects in that genre. The company recently filed suit against Couristan, Inc., a carpet and rug manufacturing company in business since 1926, alleging trademark infringement, unfair competition, deceptive trade practices, and trademark dilution for Couristan’s use of the mark WILD KINGDOM for a ‘safari-inspired residential carpet’ collection showcasing three different animal patterns.” Read on>>

What Do Trademark Owners Need to Know About the Trademark Clearinghouse for New gTLDs? (Bennett Jones LLP):

“The Internet Committee for Assigned Names and Numbers (ICANN), a nonprofit organization that oversees the use of Internet domains, has recently implemented a new generic Top-Level Domain (gTLD) program for the purpose of increasing competition in the domain name space. Given that this program may also increase incidents of cybersquatting, or the temptation to misappropriate a legitimate trademark owner’s mark, ICANN has built into its new gTLD program several enhanced trademark rights mechanisms, including a Trademark Clearinghouse.” Read on>>

Lady Gaga: She’s No (Copyright) Monster (Foley Hoag LLP):

“The federal district court in New Jersey has dismissed Stefani Germanotta, a.k.a. Lady Gaga, from a copyright lawsuit filed by composer and record producer Calvin Gaines. Mr. Gaines alleged in his complaint that his writing and producing partner, Rob Fusari, proved to be something of a Judas by betraying their longstanding collaborative relationship.” Read on>>

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