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Oracle v. Google Headed Back to District Court for a Third Time

Posted Thursday, March 29, 2018 by Kyle Straughan

In 2010, Oracle, having just acquired Sun Microsystems and their portfolio of intellectual property, sued Google for copyright and patent infringement for copying Java APIs(1). Oracle argued that Google had chosen to copy the APIs rather than pursue a license for Oracle’s Java software platform. The lawsuit went to trial for the first time in 2012, where Oracle initially lost. On appeal, Oracle prevailed on its claims that Google had copied the APIs in Java, which the appeals court held were eligible for copyright. The Federal Circuit sent the case back for jury trial to determine of Google’s use of the APIs was fair use.

In 2016 the jury in the second trial determined that Google’s use of the APIs was fair use, and Oracle appealed once again. Despite the jury verdict, Oracle asked for judgment as a matter of law that the use was not fair, and to thus begin a new trial to determine damages. The judge declined to do so.

Oracle once again appealed to the Federal Circuit, and on March 27, 2018 the Federal Circuit held that Google’s use of the API packages was not fair use as a matter of law, and has remanded the case to the lower court for trial on damages. What makes this unique is that the Federal Circuit, who originally had jurisdiction due to the patent claims in Oracle’s original complaint, is a court with significantly more experience in patent law, but is applying Ninth Circuit law to the case because of where the infringement took place. This case creates a unique situation because, as commentators have noted, it is incredibly rare for a jury verdict of fair use to be overturned. In this situation, not only has the Federal Circuit interpreted Ninth Circuit law in its decision, but its decision is not precedent in the Ninth Circuit.

(1) API is abbreviation for “Application Programing Interface,” which are subroutines, protocols and tools used to build software. Essentially they are modular, pre-assembled pieces that can be utilized in the creation of larger pieces of software.

Supreme Court Considers Constitutional Challenge to Inter Partes Review

Posted Monday, March 26, 2018 by Kyle Straughan

Currently before the Supreme Court is a patent adjudication case that could not only have significant impact on the way post-grant patent disputes are adjudicated, but on administrative law as a whole. The challenge is against the use of a process called “Inter Partes Review,” which was created as part of the America Invents Act in 2011. In an inter partes review those opposed to the grant of a patent would file a petition with the director of the Patent and Trademark Office (PTO) requesting a review proceeding. The patent holder then has an opportunity to respond, and the PTO then has three months to determine whether to institute a proceeding. The Patent Trial and Appeal Board (PTAB) then determines whether the PTO erred in issuing the patent, and if so, has the authority to invalidate the patent subject to review by the Federal Circuit.

The case, Oil States Energy Services v. Greene’s Energy Group, where the petitioner, Oil States, challenges the constitutionality of the inter partes review process. The dispute itself involved Oil States suing Greene’s Energy for allegedly infringing patents on technology for preserving wellhead equipment, to which Greene’s Energy responded by seeking inter partes review, and the PTAB eventually concluded that the patent was invalid. Oil States then argued that Congress violated Article III and the Seventh Amendment of the Constitution by authorizing an administrative agency to invalidate the patent without giving its owner a jury trial; essentially claiming that they were having property taken without due process.

At oral argument late last year, the justices expressed concerns that reflected the practicality of the new system, with analysts concluding that none seemed to have a strong interest in invalidating the law. Justices Ginsburg and Kagan emphasized the error-correction nature of the inter partes review, as opposed to it being a removal of property, while Justice Sotomayor noted that the PTO is involved throughout the process, even if the challenger to the patent withdraws due to settlement or other reasons. Justice Kennedy noted that Congress’ power to create and define patents thereby could be argued to give Congress the authority to determine procedures for evaluating them. On the other side, Justice Roberts compared patent ownership to public employment and noted a supreme court history of not requiring that parties “take the bitter with the sweet,” in which parties given something by the government don’t necessarily have to take the bitter that it might be taken away or modified to some degree in the future. Justice Gorsuch was highly critical of the process, noting that to a functional degree the PTO Director’s decision effectively carried the force of law of an Article III judge.

While the justices have not yet handed down their decision, the results will have a tremendous impact on administrative procedure going forward.

Federal Circuit Reaffirms That Specification Cannot Broaden Narrow Claim Language

Posted Friday, March 9, 2018 by Kyle Straughan

The Federal Circuit recently affirmed a patent drafting principle that practitioners and inventors should keep in mind. Specifically, that general disclosures in a specification along with statements that describe the included embodiments as non-limiting cannot broaden claims that were narrowly drafted and prosecuted.

Chikezie Ottah (“Ottah”), one of the inventors of U.S. Patent 7,152,840 (“Book holder”), a book holding device intended for use in vehicles, strollers, wheelchairs, etc, filed suit against Fiat Chrysler and a number of other auto manufacturers, claiming that they had infringed upon his patent. The crux of Ottah’s argument was that the book holder device could also be interpreted to include the cameras many automakers attach to their vehicles. In a previous case, the Federal Circuit had held that Ottah’s claim’s language excluded fixed mounts because of claim language reading that the device be “removably attached,” and statements made during the patent’s prosecution. They found no reason to overrule previous claim construction and ruled in the defendant’s favor. In the present case, the district court granted summary judgment of non-infringement in the defendant’s favor once more.

On appeal of the present case, the Federal Circuit upheld the district court’s grant of summary judgment on the grounds of the original Federal Circuit dismissal, but also that Ottah’s patent could not be construed to include the equivalent or be the equivalent of a camera. While the specification did include a statement that the book holder “may also be used to support such items as audio/video equipment, PDAs, or mobile phones, cameras” along with other standard language that the invention is not limited to the included embodiments, the Federal Circuit found those statements were not sufficient given the specific claim language relating to book holders.


Second Circuit Hears Shoe Ornament Trademark Oral Arguments

Posted Monday, December 4, 2017 by Kyle Straughan

Last week the Second Circuit Court of Appeals heard oral arguments in the case of LVL XIII Brands, Inc. v. Louis Vuitton Malletier, a dispute over whether a metal band on the front of a shoe toe can be a trademark and whether it could acquire distinctiveness as a mark in a relatively short period of time.

In 2013, the then 29-year old Antonio Brown founded LVL XIII brands, a “luxury lifestyle” brand specializing in shoes and sneakers, which included a rectangular metal band on the front of the shoe toe. Upon discovering that Louis Vuitton was selling footwear with a similar metal plate adornment in 2014, LVL XIII filed suit, alleging trademark infringement among other unfair competition claims. While LVL XIII had a trade dress application pending at the time of suit, the trade dress application included “the wording 'LVL XIII' engraved in the metal plate, and four small screws in the corners of the metal plate.” These features do not appear in the Louis Vuitton variants, and by their inclusion on the application could be considered significant to the mark. Notably, Vuitton has included metal bands on their footwear before, prior to LVL XIII’s first use.

At trial, the district court dismissed all of the claims on summary judgment, relying primarily on the circuit’s Polaroid test to find a lack of likelihood of confusion. The court found that there was extensive third-party use of metal shoe ornamentation, and that plate had not yet acquired distinctiveness on its own. Of particular concern for LVL XIII on appeal was what it described as the court’s “unprecedented and reckless ‘test’ for determining … whether a configuration of features is entitled to trademark protection: If a configuration is ‘two-dimensional,’ the district court held, it is a trademark; and if it is ‘three dimensional’ it is not.”

LVL XIII emphasized during oral argument on appeal that one of the key issues is reverse confusion, and its attorney asserted that vendors and other parties have refused to carry or associate with the products out of fear that they would be liable to suit from Louis Vuitton. LVL XIII’s attorney added that there were assumptions by parties that there must be some kind of arrangement between LVL XIII and Vuitton at play that they did not want to be entangled in.

Vuitton focused more on the viability of the plate as a trademark, arguing that the judge was not relying on the two-dimensional v. three-dimensional test, and emphasized the relatively short amount of time LVL XIII’s mark was on the market, which they claim was too short to establish secondary meaning. Vuitton’s attorney also highlighted the distinction between a product’s design, which is not protected by trademark, and a product’s packaging, or “trade dress”, which is. The district court held that the LVL XIII shoe was the former, not the latter.

While the court’s decision is pending, and it was unclear from the questioning what viewpoint they had taken, it could potentially provide interesting precedent regarding an ornamentation on a fashion design as a trademark.

Upcoming DMCA Rules Taking Effect

Posted Wednesday, October 18, 2017 by Kyle Straughan

The Digital Millennium Copyright Act (“DMCA”) provided legal safeguards for copyright owners on the internet, is approaching the end of its agent designation grace period. Below are some of the noteworthy changes affecting service providers, a.k.a. entities “offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received,” that will take effect at the end of the current year.

  1. All service providers, including those who have previously designated a copyright takedown agent using the paper process, are required to submit new designations through the electronic system by December 31, 2017. The Copyright Office ceased accepting paper designations on December 1, 2016.

  2. Service provider copyright agent designations will only be valid for three years after registered with the office. However, amending or resubmitting a current designation will begin a new three-year period.

  3. Service providers are permitted to designate agents in a variety of ways including designating a specific person, a specific job title, a division within the company, or even a third party entity. In the case of a third party however the provider risks safe harbor loss if third party fails to provide accurate information and keep up-to-date designation.

  4. A service provider is required to supply its full legal name, physical street address (not a post office box), telephone number, email address, any alternate names used by the service provider, and the name, organization, physical mail address, telephone number, and email address of its designated agent. The mailing address for the agent may be a Post Office box.

  5. Service providers must also provide any alternative names under which it is doing business “including any names that the service provider would expect members of the public to be likely to use to search the directory for the service provider’s designated agent.” The requirement to provide alternate names is not limited solely to names under which a service provider is doing business, such as a “d/b/a” name. Rather, service providers must list all alternate names that the public would be likely to use to search for the service provider’s designated agent in the directory, including all names under which the service provider is doing business, website names and addresses (i.e., URLs, such as .com or .org), software application names, and other commonly used names.

  6. Separate legal entities such as corporate parents or subsidiaries are NOT considered alternate names but each must have its own separately registered designation.

  7. Related or affiliated service providers that are separate legal entities are considered separate service providers and must have their own designation.

  8. The Office will maintain prior versions of electronic and paper designations for up to 10 years.

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