• Petitioner Must Prove Unpatentability of Patentee’s Substitute Claims in an IPR

    Due to the recent decision in Aqua Products v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the Court disagreed with the Board’s decision to deny Bosch’s motion to amend. The Board noted in its final decision that it was “unpersuaded that Bosch had demonstrated that the proposed substitute claims are patentable.” However, under Aqua Products, the patent owner does not bear the burden of proof for the patentability of its proposed amended claims in an IPR proceeding. Rather, the petitioner must prove…

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  • Whether TSA Action is Attributable for Direct Infringement is Genuine Issue of Fact

    The key issue in the present appeal, in light of Akamai V, is whether TSA’s performance of the final two steps of the patented method claims can be attributed to Travel Sentry, such that Travel Sentry is responsible for infringing the relevant claims… Under Akamai V, direct infringement under § 271(a) occurs where all steps of a claimed method are performed by a single entity. When more than one actor is involved in practicing the steps, the court considers whether the acts of one entity are…

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  • Combinations do Not Anticipate if Artisan Would Not Immediately Envision Claimed Combination

    The Federal Circuit heard the case of Microsoft Corp. v. Biscotti, Inc. After Biscotti, Inc. (“Biscotti”) sued Microsoft Corp. (“Microsoft”) for patent infringement, Microsoft filed three unsuccessful inter partes reviews (“IPR”) challenging certain claims of U.S. Patent No. 8,144,182 (“the ‘182 patent”) as anticipated or obvious. The ‘182 patent relates to tools and techniques for providing video calling solutions. The IPRs focused on independent claims 6 and 69, and their dependent claims. …

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  • Open Letter Exaggerates the Benefits of Recent Patent Reforms

    HTIA’s letter argues that venture capital funding and startup activity have grown in recent years, further proof of their view that the federal government has properly pursued patent system reforms. Using data tools available through PwC MoneyTree, the HTIA cites data indicating that venture capital investments in the U.S. have increased from $32.8 billion in 2012 up to $61 billion in 2016, representing an 86 percent increase in that time. Of course, the letter easily lets go of the fact that…

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  • Trimble on TROs

    Professor Marketa Trimble has posted a paper on ssrn titled Temporary Restraining Orders to Enforce Intellectual Property Rights at Trade Shows: An Empirical Study, 83 Brooklyn Law Review __ (forthcoming 2018).  Here is a link to the paper, and here is the abstract:
    Infringements of intellectual property (“IP”) rights by exhibitors at trade shows (also called trade fairs or exhibitions), such as infringements committed through exhibitions of or offers to sell infringing products, can be extremely damaging to IP right owners because of the wide exposure that trade shows provide for infringing IP; the promotion of the infringing IP and the contacts made by infringers at trade shows can facilitate further infringements after a trade show that can be very difficult for IP right owners to prevent. IP right owners therefore seek to obtain emergency injunctive relief to stop trade show infringements immediately — if possible, during the trade show itself. In the United States, the relief that courts issue in these situations is typically a temporary restraining order (“TRO”). This article reviews the law and practice of TROs requested and issued for trade shows and reports original empirical findings about the practice at the U.S. District Court for the District of Nevada — the court that issues TROs for trade shows that take place in Las Vegas, Nevada, a major international trade show center. Based on an analysis of the law and practice, the article argues that in the context of trade shows, current law on injunctive relief in IP cases relegates a TRO to a position as a tool that is available only against foreign infringers who have infringed IP rights before the trade show in question. While there may be multiple reasons why TROs issued for trade shows often target foreign infringers, current TRO law might be a contributing factor to the high percentage of trade show-related TROs issued against foreign infringers. The limited availability of TROs for trade shows is problematic because it leaves IP right owners without access to emergency relief in situations other than those involving pre-existing infringements by foreign infringers. Absent a change in the current law, alternative dispute resolution mechanisms may offer a route to more accessible emergency relief at trade shows.
    I read a version of this in draft, and I thought it was quite good.  For me the principal takeaway point was that the general problem with TROs is that they are available only for emergency situations, but in order to obtain a TRO the movant has to provide among other things a detailed evidentiary basis of irreparable harm, which presumably is very difficult to do in a genuine emergency.  Some deserving cases therefore don’t result in TROs.  Moreover, I suspect the problem might get worse before it gets better, in view of recent Federal Circuit cases (Nichia v. Everlight, Amgen v. Sanofi; see discussion here and here) that read eBay as requiring the movant to prevail on all four factors to obtain an injunction (rather than, as under a  traditional equitable approach would have it, four factors to be balanced and considered, such that weak or nonexistent evidence on one factor could be compensated for by stronger evidence on another).  Thus, a traditional approach as I understand it might not require such a detailed showing of irreparable harm if the balance of hardships weighed very strongly in favor of the IP owner (and perhaps the balance would weigh in favor of the IP owner if it was required to post a meaningful security bond).  But under eBay and Winter as understood by the Federal Circuit, I think it will become even more difficult to get a TRO (or other form of injunctive relief).
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  • Trimble on TROs

    Professor Marketa Trimble has posted a paper on ssrn titled Temporary Restraining Orders to Enforce Intellectual Property Rights at Trade Shows: An Empirical Study, 83 Brooklyn Law Review __ (forthcoming 2018).  Here is a link to the paper, and here is the abstract:
    Infringements of intellectual property (“IP”) rights by exhibitors at trade shows (also called trade fairs or exhibitions), such as infringements committed through exhibitions of or offers to sell infringing products, can be extremely damaging to IP right owners because of the wide exposure that trade shows provide for infringing IP; the promotion of the infringing IP and the contacts made by infringers at trade shows can facilitate further infringements after a trade show that can be very difficult for IP right owners to prevent. IP right owners therefore seek to obtain emergency injunctive relief to stop trade show infringements immediately — if possible, during the trade show itself. In the United States, the relief that courts issue in these situations is typically a temporary restraining order (“TRO”). This article reviews the law and practice of TROs requested and issued for trade shows and reports original empirical findings about the practice at the U.S. District Court for the District of Nevada — the court that issues TROs for trade shows that take place in Las Vegas, Nevada, a major international trade show center. Based on an analysis of the law and practice, the article argues that in the context of trade shows, current law on injunctive relief in IP cases relegates a TRO to a position as a tool that is available only against foreign infringers who have infringed IP rights before the trade show in question. While there may be multiple reasons why TROs issued for trade shows often target foreign infringers, current TRO law might be a contributing factor to the high percentage of trade show-related TROs issued against foreign infringers. The limited availability of TROs for trade shows is problematic because it leaves IP right owners without access to emergency relief in situations other than those involving pre-existing infringements by foreign infringers. Absent a change in the current law, alternative dispute resolution mechanisms may offer a route to more accessible emergency relief at trade shows.
    I read a version of this in draft, and I thought it was quite good.  For me the principal takeaway point was that the general problem with TROs is that they are available only for emergency situations, but in order to obtain a TRO the movant has to provide among other things a detailed evidentiary basis of irreparable harm, which presumably is very difficult to do in a genuine emergency.  Some deserving cases therefore don’t result in TROs.  Moreover, I suspect the problem might get worse before it gets better, in view of recent Federal Circuit cases (Nichia v. Everlight, Amgen v. Sanofi; see discussion here and here) that read eBay as requiring the movant to prevail on all four factors to obtain an injunction (rather than, as under a  traditional equitable approach would have it, four factors to be balanced and considered, such that weak or nonexistent evidence on one factor could be compensated for by stronger evidence on another).  Thus, a traditional approach as I understand it might not require such a detailed showing of irreparable harm if the balance of hardships weighed very strongly in favor of the IP owner (and perhaps the balance would weigh in favor of the IP owner if it was required to post a meaningful security bond).  But under eBay and Winter as understood by the Federal Circuit, I think it will become even more difficult to get a TRO (or other form of injunctive relief).
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  • Taylor Swift, Shake it Off, Learned Hand and ‘Ode on a Grecian Urn’

    The Daily Mail reported on 3 Jan 2018 that lawyers for Taylor Swift have moved for dismissal in the
    “Shake it Off” case [see She’s got a Reputation to uphold! Taylor Swift wants lawsuit involving girl group 3LW dismissed as ‘no one owns’ the phrases in her hit song Shake It Off

    Lexology.com has a post on some legal aspects of the case, the complaint for which goes back to September 2017.
    See “Haters Gonna Hate, Hate . . . .” Can Taylor Swift “Shake it Off”? . Within the lexology post, certain text caught the eye of IPBiz:


    Second, the 2015 case referenced by the plaintiffs, which is available here, does not actually say that the plaintiffs’ song was the first to use the lyrics “Playas, they gonna play / And haters, they gonna hate.” Rather, that decision just notes that the lyrics were used in the plaintiffs’ song in a listing of internet sources using similar terms. (Also, it should be noted that copyright law does not require a work to be original in the sense of being novel—or the first to create the expression. Rather copyright law only requires independent creation).

    Independent creation can be a defense to a charge of copyright infringement. However, the last sentence seems to imply that one can obtain copyright protection on later, independently created, material. Text in the Supreme Court Dastar decision (near where the Stiffel case is cited) might suggest otherwise.

    Nevertheless, there is some support for the proposition, arising from no less an authority than Learned Hand.
    A post on 22 June 2005 on the (now-retired) patry copyright blog, titled Independent Creation: A Bulwark of Copyright states:


    in Sheldon v. MGM Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936), Hand had already foreshadowed Arnstein when he famously wrote “[I]f by some magic a man who had never known it were to compose anew Keats’s ‘Ode on a Grecian Urn,’ he would be an ‘author,’ and if he copyrighted it, others might not copy that poem, though they might of course copy Keats’s.”

    Also, of note in the June 22 Patry post:


    The principle being well-established now is not, unfortunately, a guarantee that it cannot be undermined. One way independent creation is threatened is procedural, the misdescription of it as an affirmative defense. It is not; it is instead a denial of copying. The difference is significant. Once plaintiff has made out a prima facie case, defendant may interpose an affirmative defense for which defendant bears the burden of production and persuasion. By contrast, where defendant denies an element of plaintiff’s prima facie case, the burden of persuasion remains with plaintiff, although the burden of production may or may not shift as the case proceeds. Independent creation is a denial of a central element of plaintiff’s prima facie case, copying. Plaintiff always bears the burden of persuasion on copying and initially bears the burden of production. The best discussion of these points (including copyright) is in a Third Circuit trade secrets case, Moore v. Kulicke & Soffa Industries, Inc., 318 F.3d 561, 573-574 (3d Cir. 2003).

    The Patry blog had a relevant post the next day, on June 23, 2005, titled Striking Similarity and Evidentiary Problems which included the text:


    In brief, we can say that the infringement elements of plaintiff’s prima facie case are access plus copying plus material similarities in protectible expression. Access is a component of copying because you can’t copy if you don’t have access. But access isn’t copying and the copying must still be material. Access is broadly defined to include not only literal access but also a reasonable opportunity to see or hear the work (the latest bubble-gum pop song you can’t escape if you try, for example). Where access is established and some similarities (even in non-protectible material) are shown between the parties’ works, copying can be presumed, but this is of course rebuttable.

    Arnstein held that even where access is absent, one can infer both copying and the copying necessary to also prove material appropriation, if the similarities “are so striking as to preclude the possibility that plaintiff and defendant independently arrived at the same result.” Striking similarity thus collapses the entire infringement analysis into itself. One can say, ah but it just permits an inference. Right, and tell that to a jury, as the BeeGees found out. (They were saved by a jnov).

    Any inference must be based on an established fact (access) from which one may then infer copying from yet other evidence (e.g., common errors or some level of similarity)(The best discussion of this is Judge King’s dissenting opinion in the first Bouchat v. Baltimore Ravens, Inc. opinion, 241 F.3d 350, 365 (4th Cir. 2000)). But with striking similarity there is no established fact from which an inference is made. To the contrary, plaintiff seeks to create an inference and to then use that free-floating inference to prove all elements of its prima facie case.

    The plausibility of Hand’s statement in Sheldon, that the later person would be an author, is questionable.

    See 2005 post on IPBiz, Remembering Dastar : For the right to copy, without attribution, a previously copyrighted work, the Supreme Court cited to patent law: The right to copy, and to copy without attribution, once a copyright has expired, like “the right to make [an article whose patent has expired]including the right to make it in precisely the shape it carried when patented-passes to the public.” Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225, 230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 121-122 (1938).

    See also IPBiz post Allison Routman, Frank Zappa, and plagiarism : Copyright law protects the originality and creativity of authors, but only for a limited time. After a copyright expires, Scalia explained, “the public may use the invention or work at will and without attribution.”

    See also IPBiz post Accidental plagiarism? :

    The issues in copyright infringement are laid out in a recent Sixth Circuit case, Bridgeport v. UMG:

    To establish that it has been copied, a plaintiff must either introduce direct evidence of the
    defendant’s copying or prove it indirectly by showing that the defendant had access to
    the plaintiff’s work and that there is a substantial similarity between it and the
    defendant’s work, thus giving rise to an inference of copying. See Ellis v. Diffie, 177
    F.3d 503, 506 (6th Cir. 1999). Even if access cannot be proven, a plaintiff may prevail
    by showing a high degree of similarity between the two works. See id. at 507.

    See also

    http://itre.cis.upenn.edu/myl/languagelog/archives/003066.html

    http://readerswonderland.com/discussion-the-statistical-probability-of-accidental-plagiarism/

    https://www.google.com/amp/thehill.com/blogs/pundits-blog/presidential-campaign/288403-the-1-in-87-billion-chance-it-wasnt-plagiarism%3famp

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