CES Convention Won't Showcase This Trove of Technology

          Each year around this time, the biggest names in tech converge on Las Vegas at the annual International CES Show (Jan. 6-10), which organizers tout as a stage where break-through consumer electronics innovations are introduced to the marketplace.  Wearable technology, tablet computers, and all the latest gadgets for the home, office, and gym will be on display.  CES's spotlights, however, won't be shinning on some of the most technologically advanced concepts to come out of the minds of innovators this past year.  That's because those ideas pose a national security threat, and the government doesn't want the wrong people learning about them.

          Today, more than 5,400 U.S. patents are subject to at least one Secrecy Order issued by the U.S. government, according to statistics obtained through the Freedom of Information Act (source: FAS.org). The U.S. Patent & Trademark Office (PTO), the agency charged with issuing Secrecy Orders upon recommendation by various U.S. government departments, is required to issue Secrecy Orders as part of its role in implementing the Invention Secrecy Act, 35 U.S.C. Sec. 181, a law enacted in 1951.

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Classen v. King: Expanding Patent Law's Pharma Safe Harbor

Elan Pharmaceuticals          In Classen Immunotherapies v. King Pharmaceuticals, et al., No. 04-cv-3521 WDQ (D. Md 2013) (J. Quarles), the U.S. District Court for the District of Maryland denied Classen's motion to reconsider the Court's previous (2006) grant of summary judgment that defendant Elan Pharmaceuticals did not infringe Classen's patents under the patent statute's safe harbor provision, 35 U.S.C 271(e)(1).  In doing so, the Court found that Elan's use of Classen's patents as part of fed and fast studies submitted to the FDA in Elan's supplemental New Drug Application and Citizen Petition was "reasonably related to the submission of information under the [Federal Food, Drug, and Cosmetics Act]" and thus immune from infringement.

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Book Review: Maryland IP Handbook

Patent, Copyright, Trade Secret, Right of Publicity, Trademark Handbook for Maryland Business and Litigation Lawyers by Brian Higgins, Peter Gunst, Dempsey Nash, Lawrence Sung, Eric Easton, Ned Himmelrich, Julie Rubin, and James Astrachan (editor), MSBA, 2013

          Though some might say my opinion is biased and shamelessly self-promoting, the Handbook of intellectual property law you see to the right is as useful a reference book as there ever was. Okay, maybe not as useful as, say, the Dictionary, but where else will you find in a single bound reference a comprehensive, up-to-date, and fully-cited treatment of the current state of federal and Maryland intellectual property law?

          According to the publisher, the Handbook was conceived to serve the needs of business lawyers and litigators, specifically lawyers who sometimes counsel businesses or try cases involving patent, copyright, trade secret, right of publicity, and trademark law.  Its purpose is to provide a practical, and handy, resource that explains much of what those lawyers should know about intellectual property.  It achieves that purpose and much more, including providing full citations to current case law even seasoned IP lawyers will find useful. 

          I contributed Chapter 4: right of publicity law (and on this website you will find several posts on this subject, one of my favorite).  The other authors include a Maryland judge, two law professors, and some of Maryland's top practitioners in IP law.  If you missed the companion 6 CLE course offered by the Maryland State Bar Association, check the MSBA website for future classes.

Classen v. Biogen: Excluding On-Going Patent Reexamination Evidence From Court's Claim Construction Analysis

           In Classen Immunotherapies v. Biogen, slip op., No. WDQ-04-2607 (D. Md Sep. 5 2013)  (J. Quarles), the U.S. District Court for the District of Maryland denied defendant Biogen's request to introduce, as part of claim construction, evidence of on-going reexamination of the patent-in-suit.  Finding that "reexamination [of the patent at the U.S. Patent & Trademark Office (PTO)] had not been completed" and thus development of the reexamination record would continue, and noting that other courts (citing Washington and Texas) have "generally declined to consider material from unconcluded reexamination proceedings," the court declined to consider Biogen's evidence.  In doing so, the court distinguished the facts from other cases involving interpretation of claims at preliminary injunction proceeding, where the Federal Circuit has instructed court's to "monitor proceedings" at the PTO to ascertain whether the court's early construction of any claims as part of its "likelihood of success on the merits" analysis are impacted by PTO proceedings (Proctor & Gamble v. Kraft Foods Global, 549 F.3d 842 (Fed. Cir. 2008)).

The Classen decision follow a 2012 Maryland U.S. District Court case involving admissibility of reexamination evidence at trial.  In IA Labs v. Nintendo, Maryland's U.S. District Court granted Nintendo's motion to exclude evidence at trial pertaining to the outcome of a reexamination proceeding involving plaintiff's patents where the PTO found the claims patentable.  In that case, the court found that evidence related to plaintiff's successful reexamination proceedings would have had little or no probative value and could have been prejudicial in front of a jury.

Book Review: Thesaurus of Claim Construction

Thesaurus of Claim Construction, by Stuart B. Soffer and Robert C. Kahrl, Oxford University Press, 2013

          I keep a few dog-eared reference books within arms reach of my computer and work area, including Pleading Causes of Action in Maryland, the Federal Rules of Civil Procedure, and a copy of the latest patent statute--the America Invents Act version.  When the good folks at Oxford University Press sent me their second edition of the Thesaurus of Claim Construction, now two volumes, I made room for it next to the others.  I wouldn't say the Thesaurus is indispensable, but using it is like consulting a trusted, experienced colleague down the hallway.  Not sure if "adapted to" or "attached" in a patent claim will become a problem later?  Check out the Thesaurus' summaries of how courts have construed those and similar terms before sending your final draft application to the client.  Chapter 1 contains a no frills "how to use this book" summary.  Chapter 2--"Outline of the Law of Claim Construction"--is a must read for anyone new to patent law (though even skilled practitioners will find its detailed and fully cited roadmap to the claim construction process helpful).

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States Clarify Reach of Publicity Laws

          The personas of comedians, movie stars, football players and non-celebrities made appearances in publicity lawsuits this year.  Noteworthy among many of the cases is the use by plaintiffs of publicity laws where principles of right of privacy and publicity clearly have no place.  But part of the historical development of right of privacy, and in particular publicity law, include plaintiffs attempts to test the scope of existing legal boundaries with non-traditional facts and circumstances.  Recent cases are no different.  Most courts seem unwilling to deviate too far from precedent, however, relying on established law and the four corners of the Restatement (Second) of Facts or, more likely, simply dismissing plaintiff's allegations as improperly plead.  Here are what courts across the country have said about state publicity statutes and common law right of privacy asserted by plaintiffs in recent law suits.

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Implementing New U.S. Patent Rules: Helpful Resources for Individuals, Corporations, and Universities

           Changes in U.S. patent rules since September 2011, when the American Invents Act (AIA) was enacted, have altered patent application preparation, prosecution, and enforcement strategy.  For many, however, the most sweeping patent law change is just around the corner, when the AIA's first-inventor-to-file system becomes effective on March 16. Individuals, corporations, and universities looking for resources and information about first-to-file and other significant changes brought about by the AIA, and how to plan for them, may find the following articles helpful.

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Maryland Intellectual Property Lawsuits Sharply Up In 2012, Led By Surge in Copyright Cases

          More than 150 intellectual property lawsuits were filed in Maryland's federal district court in 2012, a 45% increase over 2011 levels, 75% ahead of 2010.  If the individual number of actual plaintiffs and nominal counterclaim plaintiffs in cases with multiple parties are counted, 2012 will be remembered as a very litigious year for patent, trademark, and copyright owners.  Nationally, the number of new IP lawsuits may have increased as much as 30%, according to some sources.

          The first chart below shows a spike in patent litigation activity in Maryland in 2012 compared to the previous four years. According to records available from Justia.com and PACER, plaintiffs filed 45 patent lawsuits in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2012, compared to just 35 lawsuits in 2011 and 22 in 2010 (45% and 22% differences, respectively).


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Maryland Court Denies Electronic Arts' Fair Use Defense in Bouchat's Latest Copyright Infringement Case

           In Bouchat v. NFL et al., the U.S. District Court for the District of Maryland considered Defendants' respective motions for summary judgment based upon their copyright fair use defenses (17 U.S.C. Sec. 107).  In doing so, the Court granted Defendants NFL Enterprises LLC's and Baltimore Ravens L.P.'s motions, but denied Defendant Electronic Arts' (EA Arts) and NFL Properties LLC's motions.  On December 21, 2012, Judge Garbis referred the EA matter to Magistrate Judge Gesner for possible settlement/ADR resolution.

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Book Review: Keeping Secrets - A Practical Introduction to Trade Secret Law and Strategy

Keeping Secrets – A Practical Introduction to Trade Secret Law and Strategy, by Darin W. Synder and David S. Almeling, Oxford University Press, 2012

          Some forms of intellectual property make headlines from time to time, like the recent Apple v. Samsung patent spat involving smart phone technology, and Rosetta Stone’s trademark fight involving Google’s AdWords. But rarely do patent and trademark cases approach the intrigue and novelesque quality of trade secret cases. The reasons are simple: most trade secret cases involve people—usually current or former employees—who were entrusted with a company’s most valuable confidential information, and who breached that trust for personal gain. According to the authors of Keeping Secrets, when that information is stolen and sold or used by thieves, the resulting cases are often scandalous and read like good spy novels.

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Review: Rosetta Stone and Google Battle Over AdWords

          In a highly anticipated decision from the Fourth Circuit Court of Appeals involving Rosetta Stone's trademark infringement suit against Google concerning Google's sale of AdWords (Rosetta Stone v. Google, No. 10-2007 (4th Cir. 2012)), the Fourth Circuit affirmed in part, vacated in part, and remanded to the U.S. District Court for the Eastern District of Virginia to reconsider whether Google directly or contributorily infringed, or diluted, the ROSETTA STONE trademarks by selling AdWords to third parties. Below are published remarks and analyses following the Fourth Circuit's decision, and predictions about the outcome of the case at the district court upon remand.

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Examining U.S. District Court Reversal Rates in Maryland Patent Cases

          The number and percentage of appealable issues reversed by the U.S. Courts of Appeals may suggest many things, including how well U.S. District Court judges are doing adjudicating those issues.  In patent cases, reversal rates for claim construction issues have been well documented (Schwartz, 107 Mich. L. Rev. 223 (2008); K. A. Moore, 99 Mich. L. Rev. 365 (2000); K.A. Moore, 15 Harv. J. L. Tech 1 (2001)), and indicate that about 30% of cases are reversed or vacated because of an erroneous claim construction by district courts.  The statistics below reflect patent issue reversal rates for the U.S. District Court for the District of Maryland.

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Bryce Harper and Other Athletes Seek Trademarks to Protect Their Persona

          What do Bryce Harper, Terrell Suggs, Jeremy Lin, and newly minted NBA draftee Anthony Davis have in common (other than being professional athletes that make lots of money)? They each recently applied to the U.S. Patent & Trademark Office to register trademarks to protect aspects of their persona.

          In the case of Washington National's rookie outfielder Bryce Harper, he filed a trademark application for THAT'S A CLOWN QUESTION, BRO., a reference to an answer Harper gave a Canadian reporter after a game with the Blue Jays when the reporter asked Harper, who is 19, whether he would be drinking while the Nationals were in Toronto, where the legal drinking age is 19.  Harper, who is reportedly mormon and does not drink, replied with the spontaneous clown statement, which spread virally on the Internet and is now reportedly being applied to t-shirts by Baltimore-based Under Armour.  

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Right of Privacy (Publicity) Law Explained

          Several states, including Maryland, recognize a person’s exclusive right to control the use of his or her name or likeness as a common law right of privacy.  A person who believes his or her name or likeness has been appropriated by another for commercial gain without the person's consent may bring an action to seek remedies.

          Maryland's right of privacy common law is based on Sec. 652A and 652C of the Restatement (Second) of Torts.  A recent case out of Louisiana--Tatum v. New Orleans Int'l Airport, et al., No. 2011-CA-1431 (La. Ct. App. 2012)--highlights some of the general principles of the right of privacy common law.

          At issue in Tatum was a painting (mural) on the walls of a New Orleans International Airport terminal. Plaintiff filed suit against the airport and others for the alleged improper use of an image of his late mother, Ellyna C. Tatum, in the painting. Plaintiff noted that Ms. Tatum was the first female to be designated as "Grand Marshall" for traditional jazz funerals in the city of New Orleans.

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New Domains for Ravens, Redskins, Orioles, and Nationals, But None for Capitals?

          If applications submitted to the Internet Corporation for Assigned Names and Numbers (ICANN) seeking new "Generic Top-Level Domains" (gTLD) are any indication, we may soon see new Internet addresses for the Ravens, Redskins, Orioles, and Nationals team websites.  Currently, those teams may be found at .COM subdomain websites under their respective team names (e.g., Orioles.com) or under the NFL.com or MLB.com domains. The NFL and MLB owners, however, are seeking new gTLDs to add to their top level domain rosters: .NFL and .MLB. 

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