• Transfer Pricing Basics for IP Professionals

    Transfer pricing refers to the prices charged for goods, services, and intellectual property (IP) between or among legal entities of a corporation, including a parent company and its domestic and foreign subsidiaries and other controlled entities (each entity a “Taxpayer”)… Many transfer pricing analyses are nuanced in nature, relying upon datasets, models, computations, comparisons, assumptions, and interpretations. When controlled entities are domiciled in respective different…

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  • The Powerful Effects of Copyright Reversion

    A common type of client I’ve seen in practice is the founder who sold IP (or company) to another, only to see the creation buried for one reason or another. The client usually wanted the rights back, so as to see the work grow. We invariably had to give the bad news: there was little to do but negotiate for a return (which we sometimes achieved). [Practice tip: build reversion rights into the sales contracts, though the buyer often chokes on such language].

    Of course, we explored copyright reversion, which allows for reversion after 35 years for post 1978 works. But in the software area, 3 years might as well be forever. Few software products last 35 years (is Linux a work made for hire? Uh oh).

    Paul Heald (Illinois) has done some really useful work in this area. His prior work shows the U-shape curve of books available on Amazon. Recent books are available, and books in the public domain (before the 1920s) are available, but books in copyright but not recent are not available, even those published as few as 20 years ago.

    One theme of this work is obviously that copyright terms should be shorter, and that may well be true. But one of my initial takes was that the publishers are to blame – they are sitting on books that authors may well want to publish. Reversion rights are a way to handle this – authors can take over those books and get them published if they want.

    In a new article, Paul Heald again looks at this market in a draft article called Copyright Reversion to Authors (and the Rosetta Effect): An Empirical Study of Reappearing Books (located here on SSRN). Here is the abstract:

    Copyright keeps out-of-print books unavailable to the public, and commentators speculate that statutes transferring rights back to authors would provide incentives for the republication of books from unexploited back catalogs. This study compares the availability of books whose copyrights are eligible for statutory reversion under US law with books whose copyrights are still exercised by the original publisher. It finds that 17 USC § 203, which permits reversion to authors in year 35 after publication, and 17 USC § 304, which permits reversion 56 years after publication, significantly increase in-print status for important classes of books. Several reasons are offered as to why the § 203 effect seems stronger. The 2002 decision in Random House v. Rosetta Books, which worked a one-time de facto reversion of ebook rights to authors, has an even greater effect on in-print status than the statutory schemes.

    Heald gathers three different data sets: bestselling authors, bestselling books, general population of reviewed books. He looks at whether they were available, who published them (big publisher v. independent), and where (paper or ebook). In the rest of the post, I’ll briefly discuss the findings and some thoughts.

    The study found what you might expect: reversion leads to more publication. Heald could not measure whether rights actually reverted, so he looked at time periods, whether reversion was possible or not. With this, you could do a comparison of the rate of publishing. One caveat, of course, is that newer works are more likely to be published, but Heald recognizes this, attempts to handle it somewhat, and discusses the implications.

    The aggregate publication data is ambiguous – there’s actually a lot of publishing that happened whether or not works were eligible for reversion to the authors. But the aggregation masked something important – who was publishing. A deeper look showed a shift to independent, electronic only publishing for many books. This, Heald attributes to Rosetta Stone, an important copyright case that acted as a reversion to authors for ebooks.

    Once one looks at who is publishing, one can see marked differences between big publishers and independents during the reversion/non-reversion periods. One can also see changes in the years just preceding reversion, when the parties straighten out their rights (“fish or cut bait,” if you will) leading up to reversion.

    All told, the data shows that reversion can have an important impact in bringing works back into print, that big publishers will respond to reversion, and that the best sellers are more likely to be republished than the average book. There is a lot of interesting data here- the article is long, and covers reversion, Rosetta Stone, and all of the permutations in great depth.

    As for implications, I think this article has something for everyone. For those who think copyright terms should be limited, it’s pretty clear that shorter terms might spur publication. But for those who think that authors who earn a living from writing (and their heirs) should be able to enforce their rights to incentivize dissemination, there is good evidence here that reversion can help spur value for the initial creators (with the obvious counter that some bear hug their work to limit fair use). Indeed, we might favor the same or similar copyright terms but with shorter reversion, or with reversion upon nonuse. While authors can negotiate for such rights, building them in to the statute can avoid that sticky negotiation point while limiting economic costs since the work is, after all, not being published in the meantime.

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  • Ron Coleman, Joel MacMull join Mandelbaum Salsburg P.C.

    Mandelbaum Salsburg P.C. is pleased to announce that Ronald D. Coleman, a preeminent intellectual property and appellate lawyer, has joined the Firm as a partner in its Roseland, New Jersey office. Mr. Coleman, who will Chair the Firm’s Intellectual Property & Brand Management Group, was formerly a partner at Archer Greiner, P.C. He is joining Mandelbaum with his longtime friend and colleague Joel G. MacMull who is also a partner.

    The post Ron Coleman, Joel MacMull join Mandelbaum…

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  • Shenanigans, Time Bars, and Federal Circuit Oversight

    Guest post by Saurabh Vishnubhakat, Associate Professor at the Texas A&M University School of Law and the Texas A&M College of Engineering.  Although Prof. Vishnubhakat was an advisor at the USPTO until June, 2015, his arguments here should not be imputed to the USPTO or to any other organization. Prof. Vishnubhakat was counsel of record […]

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  • Wi-Fi One, LLC v. Broadcom Corp. (Fed. Cir. 2018) (en banc)

    By Andrew Williams — On Monday, the en banc Federal Circuit held in Wi-Fi One, LLC v. Broadcom Corp. that PTAB time-bar determinations under 35 U.S.C. § 315(b) are appealable because they do not fall within the scope of the judicial-review prohibition of § 314(d). This decision overruled Achates Reference Publishing, Inc. v. Apple Inc., which was decided before the Supreme Court interpreted § 314(d) in Cuozzo Speed Technologies, LLC. v. Lee, but as we reported at the time, it was unclear whether time-bar determinations fell within the concerns of “shenanigans” expressed by Justice Breyer. The original panel decision in…

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  • Post at Politico on Alex Azar highlights possible line of questioning of HHS nominee

    The post at Politico begins

    The drugmaker [Lilly, employer of Azar] believed the erectile dysfunction drug [Cialis] might
    help a rare and deadly muscle-wasting disease that afflicts boys. The drug didn’t work
    — but under a law that promotes pediatric research,
    Lilly was able to extend the Cialis patent anyway for six months —
    and that’s worth a lot when a medication brings in over $2 billion a year.

    Critics say the brand-name drugmakers are “gaming” the patent system,
    finding all sorts of ways to protect monopolies and delay competition from generics.
    And Alex Azar — the former president of Eli Lilly’s U.S. operations, now poised
    to become the top U.S. health official — professes to oppose such tactics.

    See How Trump’s HHS nominee’s drug company ‘gamed’ a patent

    Pediatric extensions, which allow for testing of known drugs on young patients, are commonplace. Politico did state

    The pediatric exclusivity law — the one that eventually encouraged Lilly to give kids a sex drug
    — was enacted about 20 years ago with the best of intentions. Drugs don’t work the same in children
    as they do in adults, and companies needed incentives to do costly studies. In addition,
    the law encouraged drugmakers to do more research on rare disorders.

    Lilly tested Cialis on Duchenne muscular dystrophy. Its competitor Pfizer tested Viagra
    in children with a lung disorder. Neither found a cure — Viagra was more likely
    to harm children than to help them — but both boosted their bottom line.

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  • PTAB cites 37 CFR 11.802(a) in St. Regis Mohawk. Contemplate history of ABA Model Rule 8.2

    The PatentDocs blog includes the PTAB decision in Mylan v. St. Regis Mohawk Tribe [ Paper 124
    Entered: January 4, 2018. ORDER Denying Request for Oral Hearing and Denying Renewed Request for Authorization to File Motion for Additional Discovery
    37 C.F.R §§ 42.5, 42.70(a), 42.51

    See Patent Docs post The PTAB Strikes Back

    Of discovery into PTAB related to alleged bias:

    But nowhere has the Tribe offered anything other than gross speculation as to any of its assertions of alleged
    impartiality. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case
    IPR2012-00001, Paper No. 26, slip op. at 6 (PTAB Mar. 5, 2013)
    (precedential) (“The mere possibility of finding something useful, and mere
    allegation that something useful will be found, are insufficient to
    demonstrate that the requested discovery is necessary in the interest of
    justice.”). Seeking, for example, “[t]he methodology used to determine the
    annual bonuses (or other merits based compensation) for each member of
    our merits panel” and “[t]he annual reviews of all members of our merits
    panel” (id. at 6) serves no purpose in these proceedings and amounts to a
    fishing expedition that is a waste of our time and resources.

    Rule 11.802(a) appears in footnote 4:

    4 We note the USPTO Rules of Professional Conduct state that “[a]
    practitioner shall not make a statement that a practitioner knows to be false
    or with reckless disregard as to its truth or falsity concerning the
    qualifications or integrity of a judge.” 37 C.F.R. § 11.802(a). Failure to
    abide by those rules amounts to professional misconduct and may justify
    disciplinary proceedings. 37 C.F.R. §§ 11.804, 11.901.

    37 CFR 11.802(a) states:

    (a) A practitioner shall not make a statement that the practitioner knows to be false
    or with reckless disregard as to its truth or falsity concerning the qualifications
    or integrity of a judge, adjudicatory officer or public legal officer, or of a candidate
    for election or appointment to judicial or legal office.

    This text relates to ABA Model Rule 8.2. The case IN RE: Christine M. MIRE. contains a relevant footnote:

    The applicable rule in Louisiana is Rule 8.2 of Louisiana’s Rules of Professional Conduct, which tracks Model Rule of Professional Conduct 8.2. Model Rule 8.2 was promulgated by the American Bar Association (ABA), after the Supreme Court, in Garrison v. Louisiana, 379 U.S. 64 (1964), held that statements critical of judges made by a district attorney could only be “the subject of either civil or criminal sanctions” if the statements were “false” and “made with the high degree of awareness of their probable falsity demanded by New York Times [v. Sullivan, 376 U.S. 254, 270 (1964) ].” See Margarett Tarkington, Comment, The Truth Be Damned: The First Amendment, Attorney Speech, and Judicial Reputation, Geo. L.J., 97, 1567, 1568–69 nn. 1–5 and accompanying text (2009) (which contains the history of Model Rule 8 .2). The commentator further notes there is a significant disconnect between the ABA’s originally intended standard and the application of Model Rule 8.2 by courts across the country. See Id., 1569 nn. 5–6 and accompanying text.

    In Maryland:

    MLRPC 8.2(a). To establish a violation of this rule, three things must be
    proven by clear and convincing evidence: (1) that the lawyer made a false statement;
    (2) that the statement concerned the qualifications or integrity of a judge or a
    candidate for judicial office; and (3) that the lawyer made the statement with
    knowledge that it was false or with reckless disregard as to its truth or falsity.6 In
    this case, the parties have focused on the third element – whether the statement in
    Mr. Stanalonis’ campaign flyer was made with knowledge that it was false or with
    reckless disregard as to its truth or falsity.7

    Footnote 6:

    6 The rule is based on a model rule proposed by the American Bar Association.
    See American Bar Association, Annotated Model Rules of Professional Conduct 651
    (8th ed. 2015). Courts in other states that have adopted the rule have also recognized
    that it requires proof of these three elements. See In re Charges of Unprofessional
    Conduct Involving File No. 17139, 720 N.W. 2d 807, 813 (Minn. 2006).

    link: http://www.mdcourts.gov/opinions/coa/2015/74a13ag.pdf

    **Of a University of Chicago matter, see Al Alschuler on Judge Easterbrook

    **See the article by Richard Undeerwood What Gets Judges in Trouble

    **In the Ninth Circuit Court of Appeals:

    A modified version of the New York Times standard applies in the context of attorney discipline. In the recent case of United States District Court v. Sandlin, 12 F.3d 861 (9th Cir.1993), the Ninth Circuit considered a disciplinary sanction under Washington Rule of Professional Conduct 8.2, which is identical to ABA Model Rule 8.2. The Court of Appeals stated:

    The Supreme Courts of Missouri and Minnesota have determined that, in light of the compelling interests served by RPC 8.2(a), the standard to be applied is not the subjective one of New York Times, but is objective. [Matter of] Westfall, 808 S.W.2d [829] at 837 [1991]; In re Disciplinary Action Against Graham, 453 N.W.2d 313, 322 (Minn.), cert. denied, 498 U.S. 820 [111 S. Ct. 67, 112 L. Ed. 2d 41] (1990). We agree. While the language of WSRPC 8.2(a) is consistent with the constitutional limitations placed on defamation actions by New York Times, “because of the interest in protecting the public, the administration of justice, and the profession, a purely subjective standard is inappropriate.” Westfall, id. at 837. Thus, we determine what the reasonable attorney, considered in light of all his professional functions, would do in the same or similar circumstances.
    Sandlin, 12 F.3d at 867.

    Under this objective standard, a statement is reckless if made without any reasonable basis in fact. Id. Ignorance is not bliss; an attorney has an obligation to conduct a factual inquiry prior to speaking. See id. (without first deposing court reporter, attorney told FBI that judge ordered reporter to alter transcript); Westfall, 808 S.W.2d at 838 (without investigation, attorney made publicly televised statement accusing judge of purposefully dishonest conduct); In the Matter of Elizabeth Holtzman, 78 N.Y.2d 184, 573 N.Y.S.2d 39, 577 N.E.2d 30 (1991) (prior to obtaining trial minutes and without making any effort to interview witnesses, district attorney accused judge of requiring witness to demonstrate the position she was in when sexually assaulted), cert. denied, ___ U.S. ___, 112 S. Ct. 648, 116 L. Ed. 2d 665 (1991).

    link: https://law.justia.com/cases/federal/district-courts/FSupp/856/1384/1681047/
    [ BUT also Yagman, 55 F.3d 1430 (9th Cir. 1995)]

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  • 円筒形/円筒状



    $$ The shaft may be cylindrical. / シャフトは円筒形でもよい。(USP8512341)

    $$ The remainder of the substrate (the cylind…

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  • Rest in Peace Friend: Remembering Gerald Holtzman

    Earlier today I received notification from Personalized Media Communications, LLC (PMC) that its long-time president and chief licensing strategist, Gerald Holtzman, passed away on January 8 after a long illness. I knew Gerald and respected him — he was a friend. Over the last few years, as the patent system continually came under fire and innovators became vilified, Gerald was one of the loud voices of reason within the industry. Disgusted by what he saw happening to America’s patent system…

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