On January 17, 2015, the United States Patent and Trademark Office issued the January 2015 Trademark Manual of Examining Procedure (“TMEP”), which incorporates changes made in accordance with the following rules:
• Renaming of Express Mail® to Priority Mail Express®, published October 22, 2014 at 79 FR 63036;
• Reduction of Fees for Trademark Applications and Renewals, published December 16, 2014 at 79 FR 74633; and
As explained in Monday’s blog post, in general a network operator should not be liable for its users’ activity as long as the operator merely acts as a passive conduit for Internet traffic. However, network operators who remain worried about the risk of liability for copyright infringement can consider another option: the safe harbors provided by the Digital Millennium Copyright Act (“DMCA”).
In order to foster online expression and commerce, Congress crafted a set of safe harbors from copyright liability to provide “greater certainty to service providers concerning their legal exposure for infringements that may occur in the course of their activities.”
Under the DMCA, “service provider” includes “an entity . . . providing [] connections for digital online communications.” The definition of a service provider is broad, and includes those who do not operate communications equipment themselves. In one case, for example, a federal appeals court held that a payment processor for online content was a DMCA “service provider” even though it didn’t operate the alleged infringer’s Internet connection or transmit any infringing material. Congress also intended that the term cover “subcontractors” of Internet service providers. Arguably, this definition covers the providers of open Wi-Fi, such as municipalities, cafes, and libraries.
Open networks provide Internet access to the public. Users do not need to subscribe – they simply connect their devices, often over a wireless connection. For instance, the City of San Francisco recently deployed a free, public Wi-Fi network along a three-mile stretch of Market Street. Similarly, the Open Wireless Movement encourages owners of home Wi-Fi hotspots to open their networks to the public.
Operators of open networks may worry that they could be liable if people use their networks to engage in copyright infringement. This blog post generally explains the scope and limits of secondary liability for the acts of users, and additional steps network operators may choose to take to further limit any legal risk.
This post should not be taken as legal advice specific to any individual network operator.
Bloomington, Indiana – The Indiana University Maurer School of Law has selected a prominent intellectual property lawyer to serve as the first full-time director of its intellectual property law clinic.
Norman J. Hedges (pictured) will join the law school today as a clinical associate professor of law. He comes to Bloomington with over 16 years of experience in patent practice in Indianapolis, including 10 years in the Indianapolis office of Faegre Baker Daniels, where he was named partner in 2007. He has been a member of the law school’s adjunct faculty since 2014.
“We are delighted that Norm will be joining our faculty full-time,” said Mark D. Janis, Robert A. Lucas Chair of Law and director of the school’s Center for Intellectual Property Research. “He brings a wealth of practical experience that will be invaluable in building our clinic as it expands to provide pro bono IP services to our state’s most innovative start-up businesses.”
Indianapolis, Indiana – All federal criminal charges against Guoqing Cao and Shuyu Li, who were formerly employed by Eli Lilly and Company (“Lilly”), were recently dropped by federal prosecutors, who stated that “additional information” had been received that altered “the investigative facts initially relied upon by the government” in its case against Cao and Li.
This federal indictment was brought in 2013 in the Southern District of Indiana. Defendants Cao and Li, two doctoral-level scientists, were charged with multiple counts of theft. At issue was intellectual property belonging to Indiana-based Lilly valued at $55 million. Counts one through three of the indictment, as well as counts five through ten, were listed as theft of trade secrets and aiding and abetting. Count four alleged conspiracy to commit theft of trade secrets.
In the initial proceedings, the United States maintained that Defendants were traitors who had conveyed “American trade secrets” – specifically, “crown jewels” in the form of many millions worth of intellectual property belonging to Lilly – to Jiangsu Hengrui Medicine Co., Ltd., a company located in Shanghai, China.
Alexandria, Virgina – The Trademark Trial and Appeal Board (“TTAB”) will host an external stakeholder forum (please see below) on January 29, 2015, from 1 to 3 pm, to discuss issues related to its e-filing system or ESTTA (Electronic System for Trademark Trials and Appeals).
The United States Patent and Trademark Office (“USPTO”) is in the process of redesigning its IT systems to take advantage of new technology that will allow end-to-end electronic processing of trademark matters. The new system, known as Trademark Next Generation (“TMNG”), will significantly increase the functionality and flexibility of the USPTO’s systems, including those used by TTAB, but the TTAB-related aspects of TMNG, particularly for trial cases, will deploy later than those related to examination and appeals. In the interim, TTAB is considering potential updates to ESTTA that it considers crucial to its stakeholders. The goal of the forum is to gain stakeholder input as to capabilities considered to be critical, both for the purpose of enhancing ESTTA functionality in the near term and to assist TTAB in planning for the aspects of TMNG that will impact TTAB.
Some areas that TTAB has identified for discussion are:Difficulties encountered with attachments to filings, both in terms of pre-filing review and resolution of images in the Trademark Trial and Appeal Board Inquiry System (“TTABVUE”) following submission.
• Expansion of list of grounds on the ESTTA cover page for purposes of initiating opposition and cancellation proceedings.
• Modification of the consent motion form to allow filers to control resetting of dates that have not yet lapsed.
• Implementation of a “saved” feature (similar to the one available in the Trademark Electronic Application System) that will allow more than one author to contribute to the filing before submission.
This is only a preliminary list of topics for discussion and the TTAB welcomes any additional suggestions or issues that its stakeholders wish to explore.
The forum will be open to anyone who wishes to attend in person and also will be available in webinar format. The TTAB asks that you register your intent to attend by sending an e-mail with your contact information to TTABRSVP@uspto.gov. Please indicate whether you intend to attend in person or via the web.
Webinar instructions are available here. Additional information is available on the TTAB’s webpage.
Washington, D.C. – The U.S. Court of Appeals for the Federal Circuit ruled on the patent infringement litigation between Zimmer of Warsaw, Indiana and Stryker of Kalamazoo, Michigan. The Federal Circuit upheld the jury’s finding that Zimmer had infringed three of Stryker’s patents but overturned the decision of the Western District of Michigan to triple the damage award, reducing the award from $228 million to $70 million, and vacated the district court’s award of attorneys’ fees.
Stryker and Zimmer are the two principal participants in the market for orthopedic pulsed lavage devices. A modern, orthopedic pulsed lavage device is a combination spray-gun and suction-tube, used by medical professionals to clean wounds and tissue during surgery.
In 2010, Stryker Corp, Stryker Puerto Rico, Ltd. and Stryker Sales Corp. (collectively, “Stryker”), sued Zimmer, Inc., Zimmer Surgical, Inc. and Zimmer Orthopaedic Surgical Products of Warsaw, Indiana (collectively, “Zimmer”) alleging that Zimmer’s line of Pulsavac Plus pulsed lavage devices infringed three of Stryker’s patents – U.S. Patent No. 6,022,329 (“the ‘329 patent”), U.S. Patent No. 7,144,383 (“the ‘383 patent”) and U.S. Patent No. 6,179,807 (“the ‘807 patent”). A jury awarded $70 million in damages and the district court increased that figure by approximately $2.4 million to reflect sales made by Zimmer during a time period that had not been considered by the jury.
Stryker also moved for enhanced damages under 35 U.S.C. § 284, alleging willful patent infringement by Zimmer. Under § 284, “the court may increase the damages up to three times the amount found or assessed” at trial. For this determination, the court referred to Read Corp. v. Portec, Inc.. In Read, the Federal Circuit had held that the “paramount determination in deciding to grant enhancement and the amount thereof is the egregiousness of the defendant’s conduct based on all the facts and circumstances.” In evaluating the egregiousness of the defendant’s conduct, courts typically rely on the nine Read factors, which are:
1. whether the infringer deliberately copied the patentee’s ideas or design;
2. whether the infringer investigated the scope of the patent and formed a good faith belief that it was invalid or not infringed;
3. the infringer’s conduct during litigation;
4. the infringer’s size and financial condition;
5. closeness of the case;
6. duration of the infringing conduct;
7. remedial actions, if any, taken by the infringer;
8. the infringer’s motivation for harm; and
9. whether the infringer attempted to conceal its misconduct.
The district court found that all nine Read factors favored substantial enhancement of the jury’s award and trebled both the jury’s award of $70 million and the court’s award of supplemental damages.
In the current opinion, the Federal Circuit affirmed the jury’s findings that Stryker’s patents were valid and had been infringed by Zimmer, as well as the jury’s award of damages to Stryker but reversed the district court’s judgment that Zimmer’s infringement was willful.
To establish willfulness, the patentee has the burden of showing “by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” If and only if the patentee establishes this “threshold objective standard” does the inquiry then proceed to the question of whether the objectively defined risk was either known or so obvious that it should have been known to a party accused of patent infringement.
The Federal Circuit noted that the district court had failed to undertake the required objective assessment of Zimmer’s specific defenses to Stryker’s claims. The Federal Circuit then considered the question of objective recklessness, which “will not be found where the accused infringer’s position is susceptible to a reasonable conclusion of no infringement.” The court held that the objective standard showed that Zimmer had presented reasonable defenses to all of the asserted claims of Stryker’s patents. Consequently, Zimmer was found not to have acted recklessly and the decision to award enhanced damages was reversed.
Because the appellate court reversed the trial court’s determination that the infringement of the patents had been willful – and because district court’s award of attorneys’ fees was based on that determination – the Federal Circuit vacated district court’s finding that the case was exceptional as well as the award of attorneys’ fees and remanded the issue to the trial court for further consideration.
Washington, D.C. – The U.S. Supreme Court granted certiorari in a case asking whether its decision in Brulotte v. Thys Co., 379 U.S. 29 (1964), that a licensee’s obligations are absolved after the expiration of a patent, should be overruled. Kimble v. Marvel Ent. Inc., U.S., No. 13-720.
In this case, Kimble held a patent on a glove that allows its wearer to shoot pressurized foam string from the palm, mimicking a gesture of the comic-book hero “Spider-Man.” (Patent No. 5,072,856). Kimble met with Marvel’s predecessor to discuss his glove invention, which was then covered by his pending patent application. When Marvel began manufacturing a similar toy called the “Web Blaster,” Kimble sued in 1997 for patent infringement and for breach of contract based on an alleged oral agreement to compensate him for any use of his ideas.
How does a trademark infringement lawsuit begin?
A trademark lawsuit begins when the trademark owner files a complaint with a court alleging trademark infringement. Among other things, the complaint names the parties involved and sets forth the allegations that form the basis of the lawsuit. Trademark owners who decide to sue may file their complaint in either state court or federal court, depending on the circumstances. However, in most cases, the trademark owner, as plaintiff, will choose federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case “removed” to federal court.
Frequently, either before or at the time a complaint is filed, the trademark owner or the owner’s trademark attorney may send you a letter or otherwise contact you to make claims about the owner’s trademark rights and demand that you take certain actions, such as ceasing use of your mark.
The U.S. Patent Office issued the following 186 patent registrations to persons and businesses in Indiana in December 2014, based on applications filed by Indiana patent attorneys:
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